author: SWEENEY, District Judge.

text:
    WEINSTEIN v. BOWLES, Price Administrator, et al. SILVERMAN v. SAME.
    Civil Actions Nos. 4264, 4265.
    District Court, D. Massachusetts.
    Oct. 5, 1945.

      Paul T. Smith, of Boston, Mass., for plaintiffs.
    William B. Sleigh, Jr., Regional Litigation Atty., Office of Price Administration, of Boston, Mass., for defendant.
   SWEENEY, District Judge.

These cases involve appeals from orders suspending the plaintiffs’ rights to deal in commodities rationed under Ration Order 16 (Meats, Fats, Fish, etc.) for so long as these commodities are rationed. The appeal is filed pursuant to the provisions of Section 205(g) of the Emergency Price Control Act of 1942, as added by Act June 30, 1944, 50 U.S.C.A.Appendix § 925(g).

The respondents are either the owners or employees of retail establishments dealing in meat and other commodities subject to ration orders issued by the defendant administrator. Administrative hearings on the alleged violations of Ration Order 16 were held before a Hearing Commissioner at Boston, Massachusetts. In each case the Hearing Commissioner found upon the evidence that the plaintiffs had acquired and used counterfeit stamps in violation of the ration order. In consequence, the suspension orders were issued.

In both cases the proceedings were commenced by service on each of the plaintiffs here of a notice of hearing which charged violations of the ration orders. The plaintiffs maintain that these notices were defective in that they did not specify the violations charged with sufficient particularity to enable the plaintiffs adequately to defend. More particularly the plaintiffs contend that the notices were inadequate because they did not specify the exact dates upon which they are alleged to have acquired and used counterfeit red stamps. In both cases the original notice of hearing alleged:

That on divers dates between February 27, 1944, and February 15, 1945 (Silverman case), between February 27, 1944, and January 15, 1945 (Weinstein case), both dates inclusive, “you being a retailer in meat, fats, fish and cheeses, did acquire, possess, use and transfer counterfeit meat, fats, fish and cheeses red stamps and you did thereby violate the provisions of Sections 10.4 and 20.1(g) of said Revised Ration Order No. 16 and of Section 2.5 of General Ration Order No. 8.”

At the hearing in the Weinstein case, plaintiff filed a motion to quash on the ground that the notice was lacking in specificity in that it did not charge the exact dates of the alleged violations. The Hearing Commissioner took the motion under advisement and did not decide it until he rendered his opinion on June 29, 1945. At that time, in disposing of the motion to quash, the Commissioner found that the notice did not meet the requirements of Section 2.2 of Revised Procedural Regulation No. 4. Nevertheless, the Commissioner found that under the circumstances there was no reason for dismissing the entire proceeding. At no time did the plaintiff ask for specifications or register a claim of surprise and ask for a continuance. Rather, he chose to litigate the issues at the formal hearing.

In the Silverman case a motion to quash was also filed, but it was promptly denied. No further efforts were made to obtain particulars as to the dates of the alleged offenses. After the denial of the motion to quash, the hearing proceeded, and evidence was introduced upon the basis of which the Commissioner made his finding, and entered a suspension order.

On appeal to the Hearing Administrator the orders in both cases were affirmed. The plaintiffs now seek to enjoin the enforcement of these orders on the ground that they were issued in violation of the plaintiffs’ constitutional rights and are thus invalid.

Where special statutory provisions do not intervene, the function of judicial review of administrative adjudications is not to supersede administrative judgment, but merely to insure compliance with specific requirements of law and fair procedure within the proper limits of the delegated authority. Federal Communications Commission v. Pottsville Broadcasting Company, 309 U.S. 134, 146, 60 S.Ct. 437, 84 L.Ed. 656; DiMelia v. Bowles, 1 Cir., 148 F.2d 725, 726. In these cases the issues before me on review are: (1) Whether, in the course of the administrative adjudication, the plaintiffs were accorded an adequate opportunity to defend, and a full and fair hearing of the charges against them; (2) whether administrative action was supported by the evidence in such measure that the action may not be labeled arbitrary or capricious.

It may be conceded that the notices were insufficient under Section 2.2 of Revised Procedural Regulation No. 4. However, the entire proceedings are not thereby invalidated. The notices charged the plaintiffs with “acquiring, possessing, using and transferring” counterfeit red stamps and stated a period of time within which the alleged violations occurred. The appropriate sections of the ration orders-, were cited, and the language of the orders was incorporated in the charges.

When the motion to quash in the' Weinstein case was taken under advisement, and in the Silverman case was denied, the plaintiffs elected to proceed with the hearing. No specifications were asked prior to the hearing. No claim of surprise was entered at any stage of the hearings. The plaintiffs did not ask for a continuance at the close of the government’s case in order to meet the evidence presented. They did not adopt the course of resting on the motion to quash and resisting administrative enforcement by resort to judicial process.

The record indicates that the plaintiffs understood and fully litigated -the issues involved. Having elected to proceed with the hearings, and having disregarded obvious methods of obtaining additional specifications, the plaintiffs will not now be heard to say their essential rights were prejudiced by the form of notice used. The Fifth Amendment is designed for the protection of substantial rights, not to guarantee a particular form of procedure. National Labor Relations Board v. MacKay Radio & Telegraph Co., 304 U.S. 333, 350, 351, 58 S.Ct. 904, 82 L.Ed. 1381.

This is not to be taken as a condonation of the type of administrative practices here involved. There is much room for improvement in the adequacy of notices issued by federal administrative agencies. The Hearing Commissioner could have made a prompt ruling on the motion to quash in the Weinstein case in order promptly to apprise the respondent of his position. But I am unable to agree that plaintiffs’ substantial rights have been prejudiced.

On the record before me the findings of fact by the Hearing Commissioner are supported by substantial evidence, and the ultimate findings are neither arbitrary nor capricious.

The prayers for permament injunctions are denied. The actions are to be dismissed.


source: Caselaw Access Project

author: MILLER, District Judge.

license: Public Domain

text:
    CAREY v. SOCIAL SECURITY BOARD et al.
    No. 874.
    District Court, W. D. Kentucky, at Louisville.
    Oct. 4, 1945.
    Howard L. Van Arsdale, of Louisville, Ky., for plaintiff.
    Francis M. Shea, Asst. Atty. Gen., David C. Walls, U. S. Atty., of Hardinsburg, Ky., Arnold Levy, Sp. Asst, to Atty. Gen., and Hubert H. Margolies, Atty., Dept, of Justice, of Washington, D. C., for defendants.
   MILLER, District Judge.

The plaintiff, Rosalie B. Carey, guardian for Gerald C. Doyle, filed this action to review a ruling of the Appeals Council, Social Security Board, rendered on December 27, 1944. The procedure is authorized by Section 205(g) of the Social Security Act as amended, being Section 405 (g), 42 U.S.C.A. The ruling referred to denied a child’s insurance benefits to her ward Gerald C. Doyle.

Helen Carey Doyle, the wage earner in this case, died April 21, 1944. On May 19, 1944 her mother Rosalie B. Carey applied for a child’s insurance benefits on behalf pf the wage earner’s three year old child Gerald C. Doyle under Section 202(c) of the Social Security Act as amended, being Section 402(c), 42 U.S.C.A. The Bureau of Old-Age and Survivors Insurance of the Social Security Board disallowed the claim on the ground that the child was not dependent on wage earner on April 21, 1944. The claimant requested a hearing which was held on July 19, 1944. On October 14, 1944 the Referee made his findings and ruled that Gerald C. Doyle was not entitled to the benefits claimed. A review of this ruling was taken to the Appeals Council, Social Security Board, which affirmed the Referee’s rulings. The present action followed.

The Referee’s findings are supported by substantial evidence and are conclusive on the facts. Section 405(g), 42 U.S.C.A.; Walker v. Altmeyer, 2 Cir., 137 F.2d 531, 533. They are briefly as follows: In 1940 the wage earner married Aryle P. Doyle. They separated in October 1940. Their only child Gerald was born January 20, 1941. The parties were divorced in Ashland, Mississippi, on October 5, 1942. Gerald had lived with the wage earner from the date of his birth; his father had never seen him and had never contributed to his support prior to the divorce. When granting the divorce on the basis of the wage earner’s answer and cross-petition the Court ordered Gerald’s father to pay $4 a week to the wage earner for Gerald’s support, beginning October 17, 1942. Before the divorce was granted the Court had awarded custody of Gerald to the wage earner by approving an agreement to that effect between the wage earner and her husband. The wage earner never remarried and Gerald has never been legally adopted. At times the wage earner’s divorced husband was in arrears with his payments under the court order, but he made payments approximately once a month. He made at least eleven payments in 1943 and also at least eleven payments in the twelve months immediately preceding the wage earner’s death. In those twelve months he paid $4 a week for each of 52 weeks. On three occasions in those twelve months he paid for eight weeks at a time. The Referee found that after the divorce the wage earner’s divorced husband made his payments under the court order with fair regularity. In order to get the payments from the wage earner’s husband it was necessary to employ the services of two attorneys, one in Louisville where she lived and one in Mississippi where the divorced husband lived. The payments from the divorced husband were actually collected by the Mississippi attorney and forwarded by him to the wage earner after he had deducted a fee of $1 for each $16 collected. The Mississippi attorney would not have made the collections with reasonable regularity, if at all, without consistent prodding by the wage earner’s Louisville attorney. Because of his friendship for the family and the smallness of the amount collected, the Louisville attorney did not charge for his services, although he devoted a great deal of time and effort to the proceedings. The Louisville attorney estimated the reasonable value of his services at $250, which amount the Referee approved. In the year immediately preceding the wage earner’s death she actually received from her divorced husband through the court order $194 ($208 less the $14 fee of the Mississippi attorney), but to enable her to collect that amount her Louisville attorney rendered gratuitous services, the reasonable value of which was in excess of that amount. The divorced husband did not make any other contributions of any kind to Gerald, nor even send him a Christmas present. The wage earner paid all doctor’s bills and hospital bills incident to the birth of Gerald and paid subsequent doctor bills amounting to about $65. The cost of Gerald’s support in the year preceding the wage earner’s death was approximately $15 a week, all of which was paid by the wage earner except the amount she received from her divorced husband. In other words, the $194 which the wage earner received from her divorced husband paid approximately 25 percent of Gerald’s living expenses in that year; the wage earner paid the balance.

Section 202(c) of the Social Security Act as amended, Section 402(c), 42 U.S. C.A., provides, under conditions which have been complied with in this case, that the child of a deceased wage earner shall be entitled to receive a child’s insurance benefits if the child was dependent upon the wage earner at the time of the latter’s death. Paragraph (3) of subsection (c) sets forth the conditions under which a child shall be deemed dependent upon a father, and Paragraph (4) of subsection (c) sets forth the conditions under which a child shall be deemed dependent upon a mother. Paragraph (4) provides as follows: “A child shall be deemed dependent upon a mother * * * only if, at the time of such death * * * no parent other than such individual was contributing to the support of such child and such child was not living with its father or adopting father.”

Since it is undisputed in the present case that the child was not living with its father, the only question for decision is whether the father “was contributing to the support of such child” at the time of the death of his mother within the meaning of the statute. If the divorced father was contributing to the support of the child at such time then the application for the child’s insurance benefits was properly denied.

The Social Security Board has construed the phrase “was contributing to the support of such child” in the above section of the statute as meaning only contributions that are regular and substantial. Such a construction seems both reasonable and liberal towards the child. It disregards occasional gifts and minor contributions at irregular intervals, but if the contributions are regular, whether voluntary or - involuntary and constitute a material factor in the child’s support, even though not the principal factor, it seems necessary to hold that the parent was contributing to the support of the child. The word “contribute” is defined by Webster’s New International Dictionary as meaning ■“to give or grant in common with others, as to a common stock or for a common purpose; to furnish or supply in part; to give (money or other aid) for a specified object.” We readily recognize its accepted meaning when we think of our own contributions to our church, to a charity or to a public purpose. Obviously it means to furnish or give the necessary funds only in part, in common with similar payments by others, many of which are often much larger than our own. It does not mean to give or furnish the major portion of the common fund being raised. It remains then to determine whether or not the contribution by the father under the present statute was so small as to be disregarded by the Court under the doctrine of “de minimis non curat lex.” Any contribution that is substantial, as is required by the Social Security Board’s construction of the statute, avoids the application of the doctrine referred to. The lexicographer above referred to defines substantial as “considerable in amount, value or the like * * It is agreed that the father’s contribution to the child’s support amounted to 25 percent of his total expenses. Such a percentage is a substantial amount in the opinion of the Court.

While the above construction may in some cases, as in the present one, operate against the child’s right to the benefits in question, yet it will be seen that the same construction will operate in favor of the child’s rights to such benefits when the question is whether or not the child was dependent upon a father at the time when he died. Under Paragraph (3) of Section 402 (c), 42 U.S.C.A., above referred to, a child is deemed dependent upon a father, when other conditions also exist, if the father was “contributing to the support of such child.” It is probable that in the majority of cases of child’s insurance benefits the question of dependency will relate to the father rather than to the mother. The construction herein given to the statute will in the main operate to the benefit of such children.

The ruling of the Appeals Council, Social Security Board, of December 27, 1944 is accordingly affirmed. Section 405(g), 42 U.S.C.A.


author: GIBSON, District Judge.

text:
    ROSENBAUM CO. OF PITTSBURGH v. BOWLES, Price Administrator.
    Civil Action No. 4593.
    District Court, W. D. Pennsylvania.
    Oct. 5, 1945.

      Reed, Smith, Shaw & McClay and Frederick E. Milligan, all of Pittsburgh, Pa. for plaintiff.
    John A. Metz Jr., Dist. Enforcement Atty., and Emerson Samuels, Enforcement Atty., both of Pittsburgh, Pa., and John D. Masterton, Regional Enforcement Atty., of New York City, for defendant.
   GIBSON, District Judge.

The court, after hearing and consideration, makes the following Findings of Fact and Conclusions of Law:

Findings of Fact

1. Hearing Commissioner John O’Rourke made the suspension order sought to be enjoined herein after the introduction of substantial proof that the plaintiff herein was short a considerable number of shoes, which should have been on hand according to its inventory.

2. The shortage was due to the necessary employment during the war period of inexperienced salesmen, and confusion resulting therefrom, and not to any desire or intention not to co-operate with the rationing of shoes by the Office of Price Administration.

Conclusions of Law

I. The order of the Hearing Commissioner was not arbitrary and capricious except as to the excessive length of the suspension period.

II. The said order was arbitrary and capricious in that it ordered a suspension of plaintiff for more than one week.

Discussion

The complainant has brought this action to enjoin or set aside an order of suspension entered pursuant to an administrative proceeding brought by the Office of Price Administration against the plaintiff, a large department store in the City of Pittsburgh. The proceeding was brought pursuant to the Second War Powers Act of 1942, as amended, Title III, Section 301, subsection 2(a) (9), 50 U.S.C.A. Appendix § 633, sub-sec. 2(a) (9). The Court’s jurisdiction is based upon the Emergency Price Control Act of 1942, as amended by the Stabilization Extension Act of 1944, 50 U.S.C.A. Appendix § 901 et seq.

The order sought to be enjoined was made by Hearing Commissioner John O’Rourke on March 14, 1945, and later sustained by Hearing Administrator Charles L. Ferguson.

The Hearing Commissioner was acting pursuant to authority of law, and there was substantive testimony adduced before him that 1618 shoe stamps were missing and unaccounted for by the plaintiff. This being the fact, the general order of suspension cannot be enjoined in its entirety.

The complainant has urged that the action of the Hearing Commissioner was arbitrary and capricious in that he, and his superior officer, failed to allow time after hearing for the purpose of further investigating the alleged shortage. Not a great deal of force exists in this contention. The plaintiff was given about nine days notice prior to hearing and it is beyond question that such .hearings should be disposed of quite promptly.

While the court disagrees with the allegation that the judgment was arbitrary and capricious by reason of the failure of the Hearing Commissioner to continue the hearing, it feels that the order was arbitrary and capricious in that the suspension-order was for too extended a period in view of the circumstances disclosed at the hearing. It is plain to the court that the shortage of the plaintiff in shoe stamps was due at worst to some slight carelessness, and not to any hostility to or lack of desire to co-operate with the Office of Price Administration. It was acting in the face of considerable difficulty due to loss of experienced buyers in the shoe department and the necessity to employ inexperienced salesmen with consequent confusion.

In the judgment of the court the suspension period of twenty-eight days was excessive, and the court will set aside the order of suspension to the extent that it fixes the suspension period more than one week.


author: KNIGHT, District Judge.

text:
    TEVINGTON v. INTERNATIONAL MILLING CO. et al.
    Civil Action No. 1889.
    District Court, W. D. New York.
    Sept. 7, 1945.
    See also 4 F.R.D. 507.
    William J. Brock, of Buffalo, N. Y., for plaintiff.
    Adams, Smith, Brown & Starrett, of Buffalo, N. Y. (Edmund S. Brown, of Buffalo, N.Y., of counsel), for defendant International Milling Co.
   KNIGHT, District Judge.

Plaintiff moves for an order striking out International Milling Company’s fourth defense (paragraphs 7, 8, and 9 in their amended answer to the amended complaint) on the ground that the defense therein alleged is invalid and improper, redundant, immaterial, impertinent and scandalous and highly prejudicial and not a legal defense.

The fourth defense is that plaintiff was an employee of the Grain Handlers Corporation, which corporation had complied with the Longshoremen’s & Harbor Workers’ Compensation Act, 33 U.S.C.A. § 901 et seq., and that plaintiff was paid compensation and accepted it under an award in a compensation order filed by the Deputy Commissioner and this acted as an assignment to plaintiff’s employer of any and all right of plaintiff to recover damages against International.

Plaintiff denies having been awarded compensation and by affidavit alleges that he had discontinued acceptance of compensation payments and has fully reimbursed his employer therefor and that his employer has executed to plaintiff an assignment of any cause of action which the employer might have acquired.

Apparently what happened was that plaintiff’s employer filed form No. 202 with the Deputy Commissioner in charge of the District. The New York State insurance fund started payments of compensation on December 12, 1943, filing form No. 206 with the Deputy Commissioner. Compensation was paid for 24)4 weeks @ $25 weekly ($603.57), and hospital bills ($380.-70) were also paid by the Carrier. No hearing was ordered and, in accordance with section 919(c) of the Act, the Deputy Commissioner was required to reject the claim or make an award. On May 29, 1944, the Carrier terminated payments and notified the Deputy Commissioner on form No. 208. The Deputy Commissioner then wrote the State Insurance Fund stating that the employer must pay at the full rate until plaintiff was able to return to his usual work.

The affidavits submitted by the plaintiff recite that no award has been made, while the defendant’s Answer and its affidavit herein state that compensation was paid under an award in a compensation order filed by the Deputy Commissioner. Whether there was an award in a compensation order within the meaning of Section 933(b) of the aforesaid Act depends upon what was done or what action was taken by the Commissioner. The mere statement that an award was so made does not suffice to establish the fact of an award. There is nothing before the court to show what the record is in the office of the Commissioner, and it may be that the record may suffice to satisfy the statute, although it does not specifically state that an award was made. If the record is sufficient to amount to an award, it is sufficient filing within the meaning of the statute. As was said in Toomey v. Waterman S. S. Corporation, 2 Cir., 123 F.2d 718, 721: “The master reported that the Deputy Commissioner noted in his records the disposition he had made of the plaintiff’s claim for compensation. This act, though informal, was equivalent to an order and satisfied the provisions of the amendment.” There is no question that the acceptance of compensation without an award filed by the Commissioner does not preclude maintenance against a third party tort-feasor, either on the theory on the election to receive compensation or of an assignment by the operation of law of rights against third persons and that the acceptance of compensation paid without an award did not constitute an election by the claimant to accept compensation rather than to sue a third party. Ricciardi v. American Export Lines, 268 App. Div. 606, 52 N.Y.S.2d 269; Tartaglio v. Cunard White Star Ltd., D.C., 56 F.Supp. 55; Massachusetts Bonding & Ins. Co. v. Lawson, 5 Cir., 149 F.2d 853.

In Tartaglio v. Cunard White Star, supra, a motion was made to strike a comparable affirmative defense. The question there was whether an alleged defense was sufficient. Its answer alleged that the plaintiff accepted compensation as provided by the act, but it did not also allege acceptance “under an award in a compensation order filed by the deputy commissioner.” [56 F.Supp. 56] The court said: “The defense pleaded does not come within the provisions of either (a) or (b). It neither satisfies the statutory definition of an election nor does it plead the events necessary to constitute an assignment by operation of law.” In the instant case, the answer contains the allegation omitted in the Tartaglio case. In the Toomey case, supra, plaintiff had received some thirty checks, each of which bore this statement upon its face: “In payment of amount due under the workmen’s compensation act” With reference to the knowledge of the claimant, the report of the Master, which was affirmed by the District and’Circuit Courts, said, in part: “The Compensation Act imposes no obligation to see that the employee comprehends all the statute’s provisions but, even if it did, the only conclusion supported by the evidence is that the plaintiff knew he was taking payments under the compensation law and stands charged with such knowledge of his rights as the statute contemplated for effecting its provisions.”

In Cupo v. Isthmian S. S. Co., Inc., D.C., 56 F.Supp. 45, 47, again the question of the sufficiency of the Answer arose on a motion to dismiss. An affirmative defense recited that the acceptance by the plaintiff of compensation worked an assignment to plaintiff’s employers of all rights of action to recover against any other than the employer who might be liable for damages for injuries alleged. In holding this defense insufficient the court said: “There is no allegation in the ‘Sixth’ defense that the compensation was accepted by plaintiff after an order awarding compensation had been made by a deputy commissioner * * We repeat that is not the situation here.

In Brusich v. Grace Line, D.C., 56 F. Supp. 48, 49, a motion to strike was granted. The reason given appears in this quotation from the opinion: “In the answer (third defense) it is not alleged that the deputy commissioner ever made or filed such an order. Hence, a condition precedent to effective transfer to the employer of the cause of action is not shown to have happened. In consequence of the absence of such a showing I feel that a defense is not stated.”

Johnsen v. American-Hawaiian S. S. Co., 9 Cir., 98 F.2d 847 (cited by the plaintiff), was decided before the amendment of 1938 and has no bearing here since lack of knowledge of the plaintiff’s right has no significance if an award was made and filed. Schenley Distillers Corporation v. Renken, D.C., 34 F.Supp. 678, has no bearing save it recognizes the right of plaintiff to make the motion, and the same is to be said as to Dysart v. Remington Rand Inc., D.C., 31 F.Supp. 296.

Our only concern is whether a motion to strike can be granted where it appears that the pleading is sufficient upon its face, but the court is presented upon a motion to strike with affidavits to the effect that the facts stated in this defense are not true. Presumably the files in the Commissioner’s office will show some record of the proceedings taken before the Commissioner. There is nothing to show what this record is. Certainly the mere assertion by the Deputy Commissioner, and even if that were sufficiently shown here, is not enough to show facts from which a conclusion must be drawn that no award was filed.

Plaintiff claims that the evidence given on the trial directed to show that there was an award made would have an improper effect upon trial jury. It seems quite certain that the question of whether there was or was not the filing of the requisite award would be determined by the court, as a matter of law, and in any event under a proper charge the issues should be so clearly defined as will not result in unfair disadvantage of the plaintiff. Further, Rule 42 of the Federal Rules of Civil Procedure (b), 28 U.S.C.A. following section 723c, provides that the court to avoid prejudice may order a separate trial of any issue.

What has been said by the courts with reference to motions to dismiss a suit for insufficiency of the complaint or answer is applicable as well to a motion to strike a material allegation of the pleading. In Winget v. Rockwood, 8 Cir., 69 F.2d 326, 329, the court, in part, said:

“A suit should not ordinarily be disposed of on such a motion unless it clearly appears from the allegations of the bill that it must ultimately, upon final hearing, be dismissed. * * *
“That rule of procedure should be followed which will be most likely to result in justice between the parties, and, generally speaking, that result is more likely to be attained by leaving the merits of the cause to be disposed of after answer and the submission of proof, than by attempting to deal with the merits on motion to dismiss the bill.”

In Leimer v. State Mut. Life Assur. Co., 8 Cir., 108 F.2d 302, 306, it is said: “We think there is no justification for dismissing a complaint for insufficiency of statement, except where it appears to a certainty that the plaintiff would be entitled to no relief under any state of facts which could be proved in support of the claim.” Vide numerous cases there cited; and also in Continental Collieries v. Shober, 3 Cir., 130 F.2d 631, 635, it was said: “No matter how likely it may seem that the pleader will be unable to prove his case, he is entitled, upon averring a claim, to an opportunity to try to prove it.” As stated, the last cited cases, of course, refer to motions to dismiss the complaint, but the language quoted is equally applicable.

The motion should be denied.


author: GODDARD, District Judge.

text:
    ENGINEERING DEVELOPMENT LABORATORIES, Inc., v. RADIO CORPORATION OF AMERICA.
    District Court, S. D. New York.
    June 5, 1945.

      Samuel Ostrolenk, of New York City (Sidney G. Faber, of New York City, of counsel), for plaintiff.
    Stephen H. Philbin, of New York City, for defendant.
   GODDARD, District Judge.

This is a motion by the defendant for summary judgment. The suit is for infringement of patent No. 2,086,256 issued on July 6, 1937, to Harry G. Cisin on an application filed February 12, 1932. The patent is for an amplifying circuit that can be used on either alternating current [AC] or direct current [DC] without making any manual alterations in the circuit.

The motion is made on the ground that the patent claims in suit 3, 4, 5, 11, 12 and 13 are invalid as they were first presented to the Patent Office by amendment in 1936 — more than two years after their subject matter had been in public use, and hence are invalid under R.S. § 4886, 35 U.S.C.A. § 31, before amendment by 53 Stat. 1212.

The rule of law to be applied is stated in Muncie Gear Works v. Outboard Marine & Manufacturing Co., 315 U.S. 759, 768, 62 S.Ct. 865, 869, 86 L.Ed 1171:

“The claims in question are invalid if there was public use, or sale of the device which they are claimed to cover, more than two years before the first disclosure thereof to the Patent Office.”

The plaintiff has not denied any of the statements in the defendant’s affidavits that the subject matter of the claims in suit, applied for in 1936, were on public sale in 1932-1933. The question then is whether the claims in suit are on subject matter first disclosed to the Patent Office in 1936 or first disclosed in 1932. In other words, are the 1936 claims for the same or for a different invention from the invention applied for in 1932? This question is to be decided by-applying the same rule of law and tests that are applied in determining whether a reissue patent is for the same or for a different invention from the original patent. See Chicago & N. W. R. Co. v. Sayles, 97 U.S. 554, 563, 24 L.Ed. 1053. The determination is to be made by the court itself from the wording of the claims, with expert testimony only to explain the terms of the patent, if needed. United States Industrial Chemicals v. Carbide & Carbon Chemicals Corp., 315 U.S. 668, 678, 62 S.Ct. 839, 86 L.Ed. 1105.

Summary judgment is permissible in a patent suit when there is no genuine issue as to any material fact, Rule 56, Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, and the only question raised is one which may be determined from the wording of the claims and the history of the patent application. Milcor Steel Co. v. George A. Fuller Co., 2 Cir., 122 F.2d 292, affirmed 316 U.S. 143, 62 S.Ct. 969, 86 L.Ed. 1332. Such procedure, if correct, would serve the best interests of the litigants and the public by avoiding the necessity of a long trial entailing an expense “notoriously great in patent suits”.

The elimination or addition of one element in a combination makes the later claims for a new and different invention. Muncie Gear Works v. Outboard Marine & Manufacturing Co., 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171; Milcor Steel Co. v. George A. Fuller Co., 316 U.S. 143, 62 S.Ct. 969, 86 L.Ed, 1332. Even changing the characteristic of one member of a combination from rigid to flexible makes the new claims for a different invention. Schriber-Schroth Co. v. Cleveland Trust Co., 305 U.S. 47, 56-60, 573, 59 S.Ct. 8, 83 L.Ed. 34.

The application as originally submitted to the Patent Office was for a “Hearing Aid.” It was designed to operate on two electronic tubes of similar construction, and the circuit set up around the two tubes was such that the hearing aid would operate on either alternating current or direct current without the necessity of any manual changes in the circuit. The application specifies the kind of a tube for which the circuit was designed [“M” filament 137 — type AC — DC humless vacuum tubes]. The primary feature of the claims as originally submitted was the use of an ordinary three element radio tube as a rectifier. The original claims specified that the tube used as a rectifier tube had a “grid and a plate connected in multiple’’ and then added various additional circuit connections in combination. These claims were rejected by the examiner on the ground that they did not specify the real invention, which appeared to him to lie in “the power supply circuit including the manner of connecting the cathode heater circuit.” They were then cancelled by the applicant who thereby acquiesced in that rejection. It cannot now be claimed that they accurately described the invention sought to be protected by a patent. Phoenix Caster Co. v. Spiegel, 133 U.S. 360, 368, 10 S.Ct. 409, 33 L.Ed. 663; Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220-223, 312 U.S. 654, 61 S.Ct. 235, 85 L.Ed. 132.

There was no mention of the cathode heater circuit in the original claims 1-6, and there is none in claim 3 of the patent. But the plaintiff states in his affidavit that the invention in part lies in the cathode heater circuit which is connected across the main power line. These claims, therefore, need not be considered since they do not accurately describe plaintiff’s invention.

Application claims 7, 8, and 9 submitted in the first amendment of the application in November, 1932, were the first claims to specify the kind of a cathode heater circuit used in the invention. Claim 7 was rejected as vague, and was cancelled. Claims 8 and 9 were allowed after amendment, and are patent claims 1 and 2.

Plaintiff has tried to rely also on application claims 10 and 11. But in these claims, which were rejected by the Board of Appeals following the interference, and can-celled, there is no limitation putting the cathode heater circuit across the main power source. In both these claims the cathode circuit could be connected to some independent source of current. In this respect application claims 10 and 11 are as indefinite as application claim 8 was when originally submitted; but application claim 8 was amended so as to put the cathode heater circuit specifically across the main power line. Hence, application claims 10 and 11 are substantially different from plaintiff’s invention, even as claimed in 1936. This leaves only application claims 8 and 9 as the claims which properly describe the invention including the important cathode heater circuit, before 1936. However, application claims 8 and 9 differ greatly from the claims in suit.

Application claims 8 and 9, as do application claims 1-7, specify a “plurality of vacuum tubes each having a plate, a grid, a cathode and a heater filament.” All of the claims in suit, added in 1936, specify “a rectifier tube consisting of anode means, cathode means, and heater means” and “an amplifier tube comprising * * * an anode, a cathode and a heater therefor.” An anode is a plate according to the plaintiff’s affidavit. Thus the 1936 claims have dropped one element from the earlier claims, namely the grids in the tubes. This automatically eliminated the further earlier limitation that the grid and plate of the rectifier tube were connected together. But these limitations were important in obtaining the allowance of application claims 8 and 9, and the defendant urged on their behalf : “There is set forth the peculiar multiple connection of the grid and the plate in the first tube.” The 1936 claims are thus broader than the 1932 claims by the elimination of two limitations. This makes the new claims for a new -invention, and hence invalid. Muncie Gear Works v. Outboard Marine & Manufacturing Co., 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171.

Application claims 8 and 9, furthermore, include in combination a choke coil and two condensers. These are one kind of a filter. The patent claims 3 and 4 are drawn to a filter comprising inductance means and condensers. But patent claim 5 has merely a filter comprising inductance means, and in patent claims 11, 12 and 13 there is merely a generalized “filter.” But in submitting application claims 8 and 9 in response to the first rejection, the applicant said: "Also these claims include the peculiar choke coil and condenser arrangement. These features are likewise not to be found in the references which only show these element tubes.” Here again the 1936 claims have broadened the 1932 claims.

Application claims 8 and 9 have other elements in combination with those set forth above which are not included in the patent in suit. These claims include a variable resistance which plaintiff’s affidavit says may be used to control the amplification, and a condenser-shunted resistance for obtaining a steady grid operating bias for the amplifier tube. It is not necessary to obtain expert testimony to tell just what those terms mean, for their meaning is immaterial. These elements also are missing from the 1936 claims.

Plaintiff further changed the scope of the invention when, in 1936, he first added the limitation to his claims that one tube should have “an individual envelope.” Plaintiff does not raise any question of fact over this limitation, nor can it be raised. Throughout the specification included in the application, and throughout the earlier claims the applicant referred to “tubes,” without the limitation of “an individual envelope.” It was not until the amendment of July 31, 1936 that this element was specifically added by plaintiff. This new limitation makes the new claims void. Schriber-Schroth Co. v. Cleveland Trust Co., 305 U.S. 47, 56-60, 573, 59 S.Ct. 8, 83 L.Ed. 34; see also Milcor Steel Co. v. George A. Fuller Co., 316 U.S. 143, 62 S.Ct. 969, 86 L.Ed. 1332.

The scope of the enlargment of the claims in 1936 is indicated by the amendment in that year changing the title of the patent from “Hearing Aid” which is an “amplifier for deaf persons” to “Amplifying Circuit” which could include any electronic tube amplifying circuit.

Plaintiff contends that application claims 10 and 11 should be considered in the present situation. These claims were, however, admittedly copied from a patent in order to obtain an interference. According to the decision of the Board of Appeals of the Patent Office, these claims were unpatentable to the plaintiff because they were much too broad, and again plaintiff cancelled the rejected claims. Hence they do not accurately describe plaintiff’s invention, and need not now be considered.

It may also be noted that from an examination of application claims 10 and 11 it appears that these claims as originally drawn recited “a plurality of coupled multielectrode tubes” and a “rectifier.” The examiner pointed out that “this statement of structure requires at least three tubes in accordance with the patentee’s disclosure. Applicant discloses a system comprising only two tubes, one of which is an amplifier and the other of which is a rectifier.” Thereupon, the applicant amended his claims so as to cover only a two-tube combination. According to the uncontradicted exhibits annexed to the defendant’s affidavits, the radio sets made by the defendant for which plaintiff is now suing for infringement include at least four tubes. Having accepted the Patent Office limitation on the claims so as to enter the interference, the plaintiff cannot now say that his patent covers the four tube combination. See Phœnix Caster Co. v. Spiegel, supra; Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220-223, 312 U.S. 654, 61 S.Ct. 235, 85 L.Ed. 132.

After consideration of the patent as issued, together with the history of the application and the affidavits, the motion for summary judgment is granted because the subject matter of the claims in suit had been in public use for more than two years prior to their first presentation to the Patent Office. Muncie Gear Works v. Outboard Marine & Manufacturing Co., 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171.

Motion granted. Settle order on notice.


author: WYCHE, District Judge.

text:
    UNITED STATES v. STRICKLAND, Jr., et al.
    No. 9408.
    District Court, W. D. South Carolina, Anderson Division.
    Sept. 25, 1945.

      Oscar H. Doyle, U. S. Atty., and Walter H. Hood, Asst. U. S. Atty., both of Green-ville, S. C., for the United States.
    Wyche, Burgess & Wofford, of Green-ville, S. C., for defendants.
   WYCHE, District Judge.

The information in this case charges that on or about the 17th day of April, 1945, the defendants did unlawfully, knowingly and wilfully violate Section 2(a), Title III of the Second War Powers Act, 50 U.S.C.A.Appendix § 633, and Section 1394.8177(c) of Ration Order 5C, issued by the Administrator of the Office of Price Administration, in that they had in their possession and under their control gasoline rationing coupons for 23,945 gallons of gasoline, which they had acquired in a manner not permitted by Ration Order 5C.

Upon the call of the case a jury trial was waived, after which defendants’ counsel made a motion to suppress certain evidence on the ground that it had been obtained illegally through an unlawful search and seizure.

By agreement, I concluded to try the case, hear testimony in support of the motion, and consider the question raised by the motion during the trial.

The Government offered two witnesses, W. Foy Parrish and Reuben J. Watson. Parrish testified in substance: That he was, prior to and on April 17, 1945, a Special Agent of the Currency Protection Branch of the Office of Price Administration; that on April 16 and 17, 1945, he received from one Cannon information that two persons would on April 17, 1945, transport in an automobile from Athens, Georgia, to Anderson, South Carolina, a large quantity of gasoline coupons on gummed sheets for the purpose of making a sale and delivery thereof and would, at Anderson, South Carolina, drive to the Calhoun Hotel where they would meet Cannon; that Atlanta, Georgia, is the location of the Verification Center of the Regional Office of Price Administration where gasoline ration coupons on gummed sheets are sent by depository banks for screening, that is, for determination of the genuineness of used coupons and destruction after screening; that Parrish and Cannon had agreed that Cannon would meet the automobile and its two occupants and that if they had the gasoline coupons on gummed sheets that he would, by the use of his handkerchief, signal such fact to Parrish and Watson; that Parrish had, prior to this time, received other information in other cases from Cannon and found such other information correct and Cannon reliable in regard thereto; that on April 17, 1945, Parrish requested Watson, a United States Deputy Marshal, to accompany him, and that at about 3 o’clock in the afternoon, without search or arrest warrant, they went to the vicinity of the Calhoun Hotel, and watched from then until about 10 o’clock that night for the arrival of the two persons in an automobile whom Cannon had informed them would come there with gasoline coupons on gummed sheets; that at about 10 o’clock p.m. of that day an automobile bearing a Georgia license plate with two persons, the defendants, occupying the front seat thereof stopped in front of the Calhoun Hotel and Cannon went to it and communicated with the occupants while Parrish and Watson watched and that then the car was driven to the parking lot of the Calhoun Hotel at the rear thereof; that Cannon gave the pre-arranged signal with his handkerchief to communicate to Parrish and Watson that these were the two persons whom he had informed them were coming and that they had with them the gasoline coupons on gummed sheets; that Parrish then approached the driver’s side of the parked car as Watson approached the other side of the car and Parrish flashed the beam of his flashlight in the front of the car where the two defendants were sitting, the window on the driver’s side being down, and saw lying on the seat between the two defendants a bundle of gummed sheets of coupons partially covered with a newspaper; that after seeing the gummed sheets of coupons he announced to the two men in the car: “We are Federal officers, you are under arrest, put your hands where we can see them;” that the driver, Hunter, put his hands on the steering wheel, but the other man kept his hands out of sight between his knees; that he, Parrish, repeated, “Put your hands where we can see them”, and thereupon the other defendant, Strickland, dropped something to the floorboard of the car which Parrish then saw to be a pistol; that he, Parrish, made the arrest. That he ordered the men out of the car and took possession of the gummed sheets of coupons and there were 220 such sheets containing A, B, C, R, and T, gasoline rationing coupons representing approximately 23,945 gallons; that his search of the car revealed another pistol in the glove compartment, two bottles of rum and several “tip-boards”; that the driver, Hunter, was under the influence of intoxicants, but that Strickland was not drinking; that the defendants were placed in the Anderson County Jail for the night, and on April 18, 1945, were taken before the United States Commissioner.

The gummed sheets of coupons, two pistols and two bottles of rum were admitted in evidence. The gummed sheets were OPA Form No. R — 120A. The gummed sheets of coupons bore, respectively, the names of many different service stations in a number of southeastern and southern states written thereon and also bore, respectively, the endorsements of eleven different banks in several southern states.

Reuben J. Watson testified substantially in accordance with the testimony of Parrish, stating that he saw a bundle with a newspaper lying over it on the front seat of the car between the two defendants when Parrish flashed his flashlight therein. At that time he did not see the gummed sheets or coupons. The defendants did not testify and did not offer any evidence.

The Fourth Amendment, in part, is as follows: “The right of the people to be secure in their persons, houses, papers, and effects, against unreasonable searches and seizures, shall not be violated * *

It is well established in the Federal Courts that papers and property obtained from a defendant in violation of his constitutional rights under this Amendment cannot be used in evidence against him if application for their return, or for the suppression of such evidence, is seasonably made. Amos v. United States, 255 U.S. 313, 41 S.Ct. 266, 65 L.Ed. 654.

It will be observed that the Fourth Amendment does not prohibit all searches and seizures, but only such as are unreasonable. It is to be construed in a manner which will conserve public interests as well as the interests and rights of individual citizens. Carroll v. United States, 267 U.S. 132, 45 S.Ct. 280, 69 L.Ed. 543, 39 A.L.R. 790. Even though the officers had no search warrant to search the automobile of the defendants, it is my opinion that there was no unreasonable search under the facts in this case prior to the arrest of the defendants. A search implies some exploratory investigation. To observe that which is open and patent in either sunlight or artificial light is not a search. Certainly, under the circumstances here, i.e., upon a belief, reasonably arising out of dependable information furnished the agent of the Office of Price Administration that the automobile contained contraband gasoline coupons, coupled with such agent’s authority to make inquiry and to require the production of gasoline certificates for inspection under Regulation 1394.8227, hereinafter referred to, it was not an unreasonable search to turn a flashlight on the open window of an automobile and observe gummed sheets of gasoline rationing coupons lying on the front seat, only partially covered by a newspaper. Smith v. United States, 4 Cir., 2 F.2d 715.

It is unnecessary to determine whether or not the seizure here was unreasonable, for the seizure followed the arrest. The right to search and seize for the purpose of discovering the fruits, instruments or evidence of crime is incident to a lawful arrest. When a man is legally arrested for any offense, whatever is found upon his person, or in his possession, which it is unlawful for him to have, and which may be used to prove an offense, may be seized and held as evidence in the prosecution. Weeks v. United States, 232 U.S. 383, 392, 34 S.Ct. 341, 58 L.Ed. 652, L.R.A. 1915B, 834, Ann.Cas. 1915C, 1177; Carroll v. United States, 267 U.S. 132, 158, 45 S.Ct. 280, 69 L.Ed. 543, 39 A.L.R. 790.

It follows, therefore, that the question to be determined is, was the arrest of these defendants lawful?

The defendants were arrested without any warrant. The general rule is that a peace officer may arrest without a warrant one guilty of a misdemeanor, if committed in his presence, and he may arrest without a warrant one believed by the officer, upon reasonable cause, to be guilty of a felony. Carroll v. United States, supra.

Under Regulation 1394.8227, issued by the Office of Price Administration, under the authority of the Second War Powers Act, investigators of the Office of Price Administration, police officers, constables, or other law enforcement officers of the United States, or of any State, County or local Government, may require any person to produce for inspection any gasoline certificate, whether valid or invalid, void or expired; they are authorized to make inquiries of such persons to determine whether there is a violation of Ration Order 5C; and they are authorized to receive the surrender of all gasoline deposit certificates, and other evidences acquired by any person otherwise than in accordance with Ration Order 5C, whether valid, invalid, void or expired.

The right of any officer, agent, or employee of the United States engaged in the enforcement of any law of the United States to arrest without a warrant any person committing any offense in his presence, or any person who has committed, or who is suspected on reasonable grounds of having committed, a felony, is given recognition by the Congress of the United States in section 53a of T 18 U.S.C.A. prohibiting unlawful searches by officers, agents or employees of the United States, in the following proviso: “Provided, That nothing herein contained shall apply to any officer, agent, or employee of the Unitea States serving a warrant of arrest, or arresting or attempting to arrest any person committing or attempting to commit an offense in the presence of such officer, agent, or employee, or who has committed, or who is suspected on reasonable grounds of having committed, a felony." (Emphasis added.)

Without deciding whether the arrest of the defendants was lawful under the foregoing proviso of section 53a, 18 U.S.C.A. or under Regulation 1394.8227, and assuming for the purposes of this case that Office of Price Administration Agents are without authority as peace officers to make arrests, and that they have only such authority in the premises as is expressly provided by statute, or as is possessed by any private citizen, it is my opinion that the defendants, under the facts here, were subject to arrest and search by any private person without a warrant. Every citizen is under a moral obligation to prevent the commission of a felony, if possible, and has the legal right to use force to prevent its commission and to arrest the perpetrator without a warrant. Backun v. United States, 4 Cir., 112 F.2d 635.

Any person, law enforcement officer, or private person, can make an arrest where a felony has in fact been committed, and the person making the arrest has probable cause for so believing. United States v. Lindenfeld, 2 Cir., 142 F.2d 829; Brady v. United States, 6 Cir., 300 F. 540.

It is both the right and the duty of a private person, as well as a law enforcement officer, who is present when a felony is committed, to arrest the felon without waiting for the issuance of a warrant. Likewise, a private person may lawfully arrest without a warrant on fresh pursuit one whom he knows to have committed a felony. A private person acting in good faith may arrest without a warrant one who has committed a felony on an occasion already passed. In order to justify an arrest without a warrant by a private person the circumstances under which he was acting must be such that any reasonable person acting without passion or prejudice would have suspected that the person arrested committed a felony, or was implicated in it. 6 C.J.S., Arrest, § 8, pp. 606, 607.

The information from a reliable informant, reinforced by the agent’s sight of the contraband coupons before arresting the defendants, that two persons were bringing such coupons to make a sale thereof, was sufficient to lead a reasonably discreet and prudent person to believe that such persons were then and there engaged in an overt act to effect the object of a conspiracy to have in their possession coupons acquired unlawfully and to transfer such coupons unlawfully; to establish that the defendants had in fact so conspired and had committed and were committing an overt act in furtherance of their previously formed conspiracy; and that the arrest would prevent the successful consummation of the object of the conspiracy. Such conspiracy is a felony. 18 U.S.C.A. § 88, Criminal Code, § 37; 18 U.S.C.A. § 541.

It is provided by Ration Order 5C, Section 1394.8227(b), that: “all tire inspection records and gasoline deposit certificates and all coupon books, coupons, and other evidences are, and when issued shall remain, the property of the Office of Price Administration.” The Office of Price Administration is, of course, an agency and instrumentality of the United States, and the coupons were, therefore, the property of the United States. Information was received from a reliable informant that the coupons were upon gummed sheets. This indicated that the coupons had been previously used, and had been unlawfully diverted from their regulated course, which was to a Verification Center of the Office of Price Administration, for determination as to their genuineness, and their subsequent destruction, if genuine. The agent, as a reasonably discreet and prudent person, thus had probable cause to believe that these coupons had been stolen or embezzled, and that the two defendants had retained them in their possession with intent to convert them to their own use. This offense is a felony. 18 U.S.C.A. § 101, Criminal Code, § 48; 18 U.S.C.A. § 541. The decision of the United States Attorney to prosecute the defendants under the Second War Powers Act, the violation of which is only a misdemeanor, is immaterial. Under the facts heretofore narrated, the arrest of the defendants and the seizure of the property were legal, and the evidence thus obtained was admissible for all purposes.

The evidence establishes that the contraband coupons for 23,945 gallons of gasoline were upon official OPA forms bearing the endorsement of many different service stations, and many different banks; that they had been stolen or embezzled; that the defendants’ possession of them was unlawful; and they were acquired by the defendants in a manner not permitted by Ration Order 5C.

For the foregoing reasons the motion to suppress the evidence is denied, the defendants are adjudged guilty, and an order accordingly may be presented.


text:
    DREXLER et al. v. KOZA et al.
    Civil Action No. 3009.
    District Court, W. D. Pennsylvania.
    Oct. 4, 1945.
    Brown, Critchlow & Flick and Jo Baily Brown, all of Pittsburgh, Pa., and Lockwood, Goldsmith & Galt, Ralph G. Lockwood, and Elmer L. Goldsmith, all of Indianapolis, Ind., for plaintiffs.
    John D. Meyer, of Pittsburgh, Pa., and Frank Keiper, of Rochester, N. Y., for defendant Charles A. Koza.
    A. A. Bluestone, of Pittsburgh, Pa., for defendant John A. Anderson.
   GIBSON, District Judge.

The Court, after hearing and consideration, makes the following Findings of Fact and Conclusions of Law.

Findings of Fact

1. This is a suit for infringement of claims 1, 2 and 3 of the Charles Drexler letters patent No. 2,147,832, granted February 21, 1939, relating to an Angular Driving Mechanism.

2. That the plaintiff Charles Drexler, a resident of Indianapolis, Indiana, is the owner of the entire right, title and interest in and to said letters patent No. 2,147,832, and the plaintiff Chas. Drexler Co. is a corporation of the State of Indiana, having its principal place of business at Indianapolis, Indiana, and since January 22, 1944, has held the exclusive right to manufacture, use and sell said angular driving mechanisms under and in accordance with said letters patent in suit.

3. That the defendant Charles A. Koza, is a citizen and resident of Pittsburgh, Pennsylvania, and prior to, on or about September 2, 1943, did business under the name Invincible Tool Company, Machinery Sales and Engineering Company and C. A. Koza, Inc.; and that the defendant Invincible Tool Company is a corporation of the State of Pennsylvania, having its principal place of business at Pittsburgh, Pennsylvania, which corporation has carried on the business of the defendant Charles A. Koza, since on or about September 2, 1943.

4. That upon plaintiff’s motion the complaint was dismissed as to the defendant John A. Anderson, a citizen and resident of Pittsburgh, Pennsylvania.

5. That the patent in suit relates to a tool generally known in the trade as an angle attachment or angle tool for such uses as drilling holes, driving screws, nuts or like operations in close places.

6. That such angle tools or angle attachments have been commonly employed and known to the trade prior to the invention of the patent in suit, wherein there is provided a housing having two tubular portions extending at an angle to each other, for example, 45° and 90° angles, each tubular portion providing a bearing for a driven and driving shaft, respectively, and wherein adjacent ends of said shafts are provided with meshing bevel gears through which the driving shaft will drive the driven shaft at an angle, all as disclosed in the prior patents of Exhibit 18, for example, Sadtler No. 1,199,823 and Klopper No. 1,420,635, but up to the time of the invention of the patent in suit no suitable thrust bearing was provided for maintaining the bevel gears in proper mesh against the longitudinal forces exerted on the respective shafts.

7. That the invention in suit is directed, as distinguished from the prior art, to the provision of a single ball bearing in contact with both bevel gears and the opposite portion of the housing, whereby the single ball bearing will take the end thrust of both gears and their respective shafts.

8. The defendants, Charles A. Koza and the corporation Invincible Tool Company, have manufactured and sold prior to the filing of the complaint and within six years thereof, angle tools or attachments as shown in letters patent of the defendant Charles A. Koza, No. 2,229,509, granted January 29, 1941, for Angle Drill Construction, and as embodied in defendants’ tool, Exhibit 11, and illustrated in defendants’ circulars, Exhibits 12, 13 and 14; and that defendants’ said tool embodied a single ball bearing in contact with the supporting means or housing of the tool and the bevel gears through which power is transmitted at an angle from one angu-larly disposed shaft to the other, as covered by claims 1, 2 and 3 of the Drexler patent here in suit, and wherein such improvement of the single ball bearing for taking up and thrust of the gears arid shafts comprises the invention disclosed and claimed in the patent in suit.

9. That the plaintiffs have done a substantial business in the manufacture and sale of their patented angle tool or angle attachment as covered by the letters patent here in suit, and have sold since the invention some 50,000 such tools; and that the invention of the patent in suit successfully met and overcame the problem of providing a satisfactory and practical thrust bearing for the opposed gears and shafts such as to maintain the gears in proper mesh under the stress of usage.

10. That in respect to defendants’ counterclaim, there was no disclosure of the invention by the defendant Charles A. Koza to the plaintiff Charles Drexler, there was no confidential relation between the defendant Koza and the plaintiff Drexler in respect to the invention in suit, and there has been no breach of confidence or violation of any oral contract by the plaintiff Drexler.

11. That the plaintiff patentee Drexler was the original and sole inventor of the invention disclosed and claimed in the patent in suit.

12. That the defendants have had knowledge and due notice of plaintiffs’ patent in suit since September 28, 1939. (Ex. T)

Conclusions of Law

I. The defenses raised and. the allegations as set forth in defendants’ counterclaim are unsupported by the evidence, and defendants have not sustained the burden imposed upon them by the grant of plaintiffs’ letters patent' such as to establish originality of the invention claimed thereby to be in the defendant Charles A. Koza; and that the correspondence between the parties during their association, and the proceedings had by the defendant Koza in the United States Patent Office in the prosecution of his letters patent No. 2,229,509, disclosing but not claiming the invention in issue, create a presumption that the defendant Koza was not the inventor of the invention in issue, which presumption has not been overcome by the evidence.

II. The defendants’ counterclaim should be dismissed.

III. The law is with the plaintiffs; that the patent in suit No. 2,147,832 is valid as to claims 1, 2 and 3 thereof, being the claims in suit; and that said patent and the said claims have been infringed by the defendants Charles A. Koza and the corporation, Invincible Tool Company, within six years and prior to filing the complaint herein.

IV. That a permanent injunction should issue against said defendants, Charles A. Koza and the corporation Invincible Tool Company, both jointly and severally, enjoining them, their privies, officers, agents, servants, employees and those in active concert or participation with them from directly or indirectly manufacturing, selling, using, advertising or offering so to do, any angular driving mechanism in infringement of claims 1, 2 and 3 of plaintiffs’ letters patent in suit No. 2,147,832, or in any wise aiding and abetting or in any way inducing or contributing to the infringement thereof.

Discussion

Patent No. 2,147,832 was issued to Charles Drexler on February 21, 1939, upon an Angular Driving Mechanism. Drexler is the owner of the patent and Chas. Drex-ler Co., Inc., the co-plaintiff, holds an exclusive license under it.

The action was originally brought against Charles A. Koza and John A. Anderson. Upon trial the case against Anderson was dismissed upon plaintiffs’ motion. By amended complaint the Invincible Tool Company, owned by the defendant Koza, was made a defendant.

The defendants do not deny the manufacture and sale of tools which have infringed the Drexler patent if it is valid, but do deny its validity. On behalf of the defense it is asserted that the inventive idea of the patent was confidentially disclosed to Drexler, the patentee, by Charles A. Koza, the defendant, and that Drexler violated the confidence and secured in his own name -the patent upon Koza’s discovery. In his counter-claim Koza alleges that Drexler is trustee ex maleficio for him, Koza, and prays the court to order the assignment of the patent to him and an accounting by Drexler for the profits arising from his appropriation of Koza’s patentable idea.

Koza, on January 21, 1941, was issued a patent upon an Angle Drill Construction, No. 2,229,509, which discloses the Drexler Patent No. 2,147,832, plus a minor feature alleged to improve Drexler. The Drexler and the Koza patents each show an angle drill having two bevel or miter gears at the corner of the drill for the purpose of transmitting power from the long power shaft to the short shaft and the drill. Each patent shows a thrust bearing for the two bevel gears which consists of a single steel ball. The center of this ball is placed at the point where the axes of the two bevel gears or their shafts come together, at the vertex of the gears. In the Drexler patent the ball is held in place by seats in the housing, while in the Koza drill the ball is held in place by a screw which has a bearing for the ball on the end of the screw. The only difference between the two patents is in the method by which the ball is held in place.

In December- of 1937 Koza was in Indianapolis and called upon Drexler. He was a manufacturer’s agent and engaged in the sale of certain tools. Among them was an angle drill which had certain defects in operation. It was not his own design. His call upon Drexler, in part, was due to information that Drexler had a Gleason gear cutting machine that could cut mitered gears with involute teeth such as he desired for use in his tools. The angular drill which he had been trying to sell, and which had certain defects, was one which was designed to work along the same lines as the Drexler patent, but which had two balls or more instead of one and which had failed to keep the two bevel gears in proper line. In discussing the possibility of Drexler making drills and other tools for him, Koza declared that he exhibited a blue print (Ex. A) to Drex-ler which disclosed an angular drill with more than one ball. He stated that during the discussion of the designing of an improved drill, he took a pencil and placed a single circle at the vertex of the gears and asked Drexler and his employe, Morgan^ what they thought of a single ball so located as a means of keeping the gears from crowding each other.

If the testimony of Koza is accepted he was the real inventor of the so-called Drexler patent for an angular driving mechanism, and the work of Drexler was nothing but the mechanical function of an expert in perfecting another’s patentable idea. The only novelty in the Drexler patent No. 2,147,832 is in the single ball located at the point where the axes of the two bevel gears come together. By that means the gears are kept from crowding, and except for its location and function nothing new exists in the patent.

Drexler and Morgan deny that a circle was placed upon the blueprint at the time it was exhibited to them, or that they ever saw on it the circle in the vertex of the gears.

To support his assertion as to the circle and its location the defendant offered in evidence a blue print (Ex. A) which he stated was the print exhibited to Drexler and Morgan. It contained a clear and undimmed circle. According to Koza’s testimony it had been placed upon the blue print about six years before the day the paper was offered in evidence. The plaintiff remarked upon the clear outline of the circle, as exhibited at the trial, on a paper six years old and which had been handled considerably in the meantime. He asserted that the very perfection of it should excite suspicion, and should be considered in connection with plaintiffs’ claim that it had not been placed on the blue print when exhibited to Drexler and Morgan.

The decision in this case rests upon the credibility to be given to the testimony of Drexler and Morgan on the one hand and Koza on the other.

On behalf of the plaintiff it is averred that Koza came to Drexler for the purpose of having him manufacture some tools for sale for the united benefit of each of them; that he exhibited a blue print showing a thrust bearing of several balls, and that Drexler, after viewing the proposed angular drill with the balls shown, had declared that he would not manufacture the drill shown in the blue print, because of its imperfections, but would endeavor to design an angular drill which would function properly. It is claimed that Patent No. 2,147,832 was the result. Koza was notified promptly that plaintiff proposed to apply for a patent on his design and never made any claim that he was the discoverer of the idea until September 28, 1939. In the meantime he apparently acquiesced in Drexler*s right to the patent. For a considerable time he sold Drexler , angular drills, having Drexler bill the purchaser and remit his commission to him. Drex-ler’s patent application was filed May 7, 1938, and granted February 21, 1939. On January 23, 1939, Koza filed his application for an Angle Drill Construction, Patent No. 2,229,509, which incorporated the inventive idea in Patent No. 2,147,832. His attention was called to the Drexler Patent by the Patent Office, but he failed to assert any claim that he was the actual inventor of it. Instead he distinguished his device from Drexler, allowing the public to be deceived if his present contention be correct. Although he made no claim that he was the inventor of Patent No. 2,147,832, he now complains that the Patent Office blundered in not declaring an interference. The burden was upon him to make his claim, and his failure to make it seems to the court to be a vital blow to it, in view of the burden of proof weighing upon him. With counsel representing him, and the ease with which he could have filed an affidavit reciting his claim, he is practically estopped from setting up his contention at this late date. Instead of asserting invention of Patent No. 2,147,832, he steadfastly kept away from its essential claims.

Koza’s only excuse for failing to have an interference declared was his poverty at the time the Drexler patent was called to his attention, and the testimony would indicate that at times he was financially embarrassed, but in 1939 he was represented by counsel and the burden of an interference proceeding could not have been heavy. A mere affidavit filed in the Patent Office at a late date would have given him better standing in this court than that to which he is now entitled.

As hereinbefore stated, the judgment herein depends upon the credibility of Drexler and Morgan for the plaintiffs, on the one hand, and Koza, defendant and counter-claimant, on the other, with the burden of proof resting heavily upon Koza. Upon consideration of the proofs the court, is of opinion that the evidence of Koza is insufficient to invalidate Patent No. 2,-147,832 to Drexler.

Let a decree for. the plaintiff be submitted.


text:
    HYDRAULIC PRESS MFG. CO. v. E. W. BLISS CO. et al.
    No. 676.
    District Court, W. D. New York.
    July 16, 1945.

      See, also, 2 F.R.D. 35.
    Toulmin & Toulmin, of Dayton, Ohio, and John S. Powers, of Buffalo, N. Y., Solicitor for plaintiff.
    Fraser, Myers & Manley, of New York City, and Bean, Brooks, Buckley & Bean, of Buffalo, N. Y. (Stephen H. Philbin, of New York City, of counsel), for defendants.
   KNIGHT, District Judge.

This is a suit for patent infringement. The defendants seek a summary judgment dismissing the Complaint as to each of eight claims. The patent in suit is the Ernst reissue Patent No. 19,694, and such claims relate to electrical apparatus for controlling a valve in a hydraulic press system, so that the ram and platen of the press will reciprocate to perform pressing operation on blanks, such as metal sheets. This was reissued September 10, 1935, upon original Ernst Patent No. 1,927,583, issued September 19, 1933. The application for the original patent was filed in the Patent Office September 15, 1930, and the application for the reissue patent was filed October 12, 1934. The motion relates to claims 5, 20, 27, 28, 31, 32, 34 and 36.

The grounds for dismissal, as alleged, are that “there is no genuine issue as to any material fact with respect to the alleged cause of action.” Rule 56 of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c. The facts claimed are that all of the said claims, except claim 20, are invalid because they were not presented to the Patent Office until more than two years after the alleged inventions of the patent were on sale in this country. As to claim 20, it is claimed that it is not infringed by the defendants’ stipulated structure. Reissue claims 5 and 20 are identical with claims 5 and 20 of the original patent No. 1,927,583, but the other claims herein-before mentioned are claims added to the reissue over the claims of the original patent.

The record before the court consists of defendants’ motion, the complaint, plaintiff’s bill of particulars, answer, stipulation of the Bliss alleged infringing structure, defendants’ supporting and plaintiff’s answering affidavits, and the Patent Office file wrapper, showing the original and reissue applications.

The object of the invention, as claimed, is “To provide a control means for hydraulic motors of the reciprocating double acting type including a single element which is adjustable to adapt the control means to effect either semi-automatic or completely automatic operation of the motor.”

The reissue patent is distinguished from the Ernst prior Patent No. 1,927,583 in that the reissue provides for control means adapted for either semi-automatic or completely automatic operation without any interruption of operation, while in the prior patent there is a brief suspension of the operation of the press in performing the two operations.

Extensive affidavits, by one Cannon, as a patent expert, purporting to support the grounds for the motion for dismissal, and by one Ernst, as a patent expert, purporting to show that claim 20 is infringed and that the other claims in question were either not broader in scope than as originally filed and not broader than any other claim of the original and were not void as being filed within the critical period of two years, are submitted herein. It is admitted that plaintiff sold an apparatus embodying the invention of the patents in suit under date of February 13, 1930, and made delivery of it to a corporation in Illinois under date of May 14, 1930. Section 4886, Rev.Stat. 35 U.S.C.A. § 31, as amended and applicable here, provided that one condition for the issuance of a patent to an inventor was that the invention was “not in public use or on sale in this country for more than two years prior to his (inventor’s) application.”

Claim 5 relates to holding means. Defendants allege that this claim as issued in the original patent was changed by amendment while the application was pending in the Patent Office and prior to the issuance of the patent more than two years after the sale and delivery of the apparatus as hereinbefore stated; that claim 5 as it stood in the original and as copied in the reissue patent was broader in scope than as originally filed and broader than any other claim of the original patent. As illustrative of this, defendants assert that claim 12 includes “a holding coil in said pilot circuit exterior of said branches”, while claim 5 is not limited to a holding coil in a pilot circuit; that claim 12 includes “a pilot electric circuit including two parallel circuit branches and claim 5 does not recite any electric circuit and that claim 12 includes “a normally open switch adapted to be manually closed to close the pilot circuit,” while 5 does not include such a switch. It is not claimed that claim 5 does not relate to the subject matter of the other claims or that the invention discloses in it anything which is not disclosed in the specifications and drawings of the original patent. The clause, “a holding means for retaining said switch in one of its positions,” was added to the claim in the amendment filed May 12, 1933. It is the plaintiff’s contention that these phases of the claim are not only wholly contained within the subject matter of claim 12 as filed in the original application, but that an amendment to a patent application, even though adding a broader claim, by covering an invention disclosed and shown in the original specifications and drawing, even though not claimed in the original application, is entitled to the date of the filing of the original application.

Claim 5 is the same as claim 6 in the original patent, but claim 6 was amended in the Patent Office. The plaintiff asserts that claim 6 (claim 5 as originally filed) was broader than the subject matter of claim 5 as allowed in the Ernst Patent No. 1,927,583, and that the last phase of the claim with reference to holding means was added to the claim by way of limitation in the amendment filed May 12, 1933. The plaintiff points out that the first six and one-half lines of claim 5 are identical with the first six and one-half lines of claim 12; that claim 12 includes “a main switch adapted to close an electric circuit through said flow controlling means to effect a reversal of fluid flow”, and that claim 5 has this subject matter incorporated in this phrase “an electric switch adapted when closed to effect actuation of said flow controlling means”, and that the phraseology in claim 5 that the claim includes “means associated with said switch and being responsive to a change in pressure in one of said chambers for operating said switch” is encompassed in the language in claim 12, “means associated with said last named switch and responsive to a change in pressure in said work chamber for opening said switch.” It is to be noted that claim 5 includes “a holding means for retaining said switch in one of its positions”, but claim 5 does not locate the “holding coil” as does claim 12 and does not recite any “pilot electric circuit including two parallel circuit branches” as does claim 12, but plaintiff says a pilot electric circuit and a holding coil in the pilot circuit adapted as described in 12 and a normally closed switch, as described in claim 12 are fully comprehended in the last clause of claim 5.

Claims 27, 28 and 31 relate to what is termed semi-automatic operation of the motor.

Claims 28 and 31 are substantially the same as claim 27. The earlier claims dealing with semi-automatic operation are 10 and 11, and claim 11 is similar to 10. So claims 10 and 27 are compared. The plaintiff asserts that the subject matter claimed in claims 27, 28 and 31 is fully contained in subject matter of claims 10 and 11. Defendants assert that earlier filed claim 10 claims a combination which includes both a “pump” and “switch means” manually operated; that the combination recited in claim 27 is narrower and different, because it does not either include a pump or a starter switch; and that earlier claim 10 in addition recites that the flow control means are “movable to three positions,” while claim 27 is broader in that it says nothing as to whether the means are movable to different positions or the number of such positions. Earlier claim 10 reads: “electrical actuating means * * * adapted when active to move the latter (flow control means) to its first position.” Claim 27 is also asserted to be broader because it does not specify any particular result in the activating of the “electrical actuating means.”

Plaintiff asserts that the statement in all the claims 27, 28 and 31, “a hydraulic motor having reciprocal ram means and means forming a hydraulic circuit with the motor or for supplying fluid under pressure to the motor for operating the ram” and control means that effectuate a semi-automatic operation, and come within the subject matter of claim 10. Typical claim 27 does include “an electrically operated responsive means” to reverse the stroke of the ram, and claim 10, as originally filed in the Patent Office, includes means controlling the flow-controlling means and a switch means “to render the actuating means inactive”, thereby providing a return stroke, but it may be doubted that this is sufficiently specific and clear. Claim 27 also includes means for bringing the stroke to rest at the end of a return stroke, while claim 10 speaks of these means as operable “to move said flow-controlling means to its third position.” The third position is described as the position where the fluid flow is cut off and thereby the motor is stopped in the semi-automatic operation. In answer to the claim that it does not have “flow-controlling means in said circuit” or that the flow-controlling means of the pumps are “not movable to three positions”, plaintiff says that a pump that can vary the delivery of the flow-control means regulating the positions of the pumping elements in the pump eccentrically to control delivery of the pump is within the pump and the hydraulic circuit. In other words, I take it, this means that the movements sufficiently include a pump. Claim 27 contains no reference to a “pump” as such. As to the three positions of the flow-control means, though claim 27 does say “of means forming a hydraulic circuit with said motor for operating said ram means in both directions and control means associated with said circuit”, the claim again, as I understand it, is that “means” and “control means” as set out in claim 27 show flow-control means “movable to three positions.”

The subject matter of claim 36 is the same as that of claim 34, except that claim 36 is more specific relative to the responsive means recited as being electrically operated. Plaintiff asserts that the subject matter in claims 34 and 36 is contained in earlier claims 7, 8, 9, 15, 16 and 17 as filed in the patent application. The subject matter of earlier claim 7 is the same as claims 8, 9, 15, 16 and 17, and hence the comparison is made between late claim 34 and earlier claim 7. Qaim 7 includes a pump, while claim 34 does not include a pump. Earlier claim 7 recites that the flow-control means are “movable to two positions”, while claim 34 says nothing as to the number of positions to which the flow-control means could be moved. Again, earlier claim 7 recites that “electrical-actuating means * * * ” are “adapted, when active, to move the latter (flow-controlling means) to its first position.” Claim 34 does not specify any particular result of activating the electrical actuating means, which electrical actuating means, when active, moves the flow-controlling means to its first position, and when inactive causes the ram to move through a return stroke. It is urged by the defendants that this claim 34 is broader in the respects stated than claim 7. As to these plaintiff claims that while not specifically stating them, typical claim 34 contemplates in its language, together with the drawings and specifications, “a pump”, flow-control means “movable to two positions” and that it is sufficiently specific as to any particular result of activating the electrical actuating means.

Claim 32 is directed to pressure reversal, without including means for reversing the ram in response to the latter’s movement or position, or for stopping the ram at the end of its return stroke, or for reversing the ram at the end of its return stroke.

It is claimed by the plaintiff that claim 32 is wholly contained in claim 5 as originally filed in the patent application, because claim 5 is directed to a combination substantially the same. It is also asserted by the plaintiff that the subject matter of ■claim 32, or parts thereof, may be found in other claims 6, 12, 13 and 14. So comparison is made by both parties between earlier claim 5 and late claim 32. Defendants urge that claim 32 is broader than earlier claim 5 because it defines a combination including flow-controlling means which need not necessarily be in the hydraulic circuit nor reverse the direction of the flow therein, and defendants urge that an apparatus having no flow-controlling means, or having such means which do not reverse the direction of the fluid flow, could infringe claim 32, but would not infringe earlier claim 5.

All of the claims 5, 27, 28, 31, 32, 34 and 36 of the reissue patent were filed more than two years after the date of the stipulated public use or sale. All, except 5, are found in the reissue patent only and defendants assert that each is broader in scope than any other claim of the original patent No. 1,927,583. Plaintiff says all these claims are directed to the same subject matter that was disclosed and claimed in the original application; that the filing of the application for the reissue patent was within two years from the date of the issuance of the original patent and, therefore, this critical period has not run, and further the claims could then lawfully be broadened.

Claim 20 is claimed by plaintiff to be infringed by the Bliss stipulated structure. It is the contention of plaintiff that claim 20 has a selective means for reversing the movement of the platen of the hydraulic press, etc., in response to pressure applied to the ram of the press or in response to the position of the platen of the press as called for in the claim. The pertinent clause in the claim is “means for selectively rendering either one of said switch-operating means effective.” The specific means provided in the Ernst patent for selectively rendering either one of the switch-operating means effective is the so-called “manual selective switch.” The Ernst patent states as an object of the invention: “control means including a single element which is selectively adjustable to adapt said means for automatically reversing the travel of the work element at the end of a working stroke either upon the attainment of a predetermined pressure in the work cylinder, or upon the movable work element’s reaching a predetermined position.” In the Patent Office, Ernst referring to claim 20 said: “The applicant has provided a distinctly novel improvement by means of which the control of the press may be adapted for various working conditions by the mere shifting of an electrical switch * * *. The selector switch specified in claims 20 to 24 definitely ties together the means for carrying out the different kinds of control.” Bliss employs a spring adjustable to determine at what amount of pressure the reversal would occur, and Bliss also shows a collar adjustable to determine the position of the platen at which reversal will occur. The defendants claim the Ernst structure has no element or switch constituting “means for selectively rendering either one of said switch-operating means effective.” The issue involved with regard to claim 20 is whether defendants’ independent adjustment of the collar on the position control rod and the pressure cylinder constitute means for selectively rendering either one of said switch-operating “means” effective. Ernst discloses a manual switch, while Bliss provides for independent adjustment of the collar on the position control rod and of the pressure cylinder. Both Ernst and Bliss have the same pressure cylinder and collar adjustment in two different circuits, but Bliss’ circuits are interdependent and co-acting circuits, while Ernst shows two circuits wholly independent and the operator changes from one circuit to the other by means of the selective switch.

Questions to be considered are these:

(1) Are the claims in suit, save claim 20, the same or substantially the same as claims presented in the application for the original patent? A determination that they are would require a dismissal of the motion as to such claims.

■ (2) If it were determined that the claims in suit, save claim 20, were not the same or substantially the same as claims presented in the application for the original patent, can they be sustained, if the subject matter of such claims is shown in the drawing and specifications of the application for the original patent ?

(3) Is claim 20 infringed?

It is claimed by the defendants that the claims in suit (save claim 20) are claims for a new and different invention from the old claims, and are broader in scope than any of the claims of the original invention, while the plaintiff, admitting that they are different from the invention covered by the claims in the original application as to the scope of the invention, asserts that these claims are “not for a new and different invention over the description and disclosures of the original application.” It is admitted by the defendants that the subject matter of these reissue claims was in the original application as filed. Assuming that these reissue claims were broader than any claims in the application for the original patent and were for a “new and different invention”, a determination then must be made as to whether the two years’ limitation period had run as against the claims. The plaintiff claims that the filing date of these reissue claims dates- back to the time of the filing of the application for the original patent and obviously this would be within the limitation period. The defendants’ assertion is that the actual filing date of these reissue claims is the date determinative of whether the statute had run, and obviously this was more than two years after the public sale of the device shown in the original patent. This likewise presents a question of law. “The claims in question are invalid if there were public use, or sale of the device which they are claimed to cover, more than two years before the first disclosure thereof to the Patent Office.” Mun-cie Gear Co. v. Outboard Marine & Mfg. Co., 315 U.S. 759, 62 S.Ct. 865, 869, 86 L. Ed. 1171. “Disclosure” means to make known. Does that mean “disclosure” of the claims together with the drawings and specifications on which they are based? Does it mean disclosure of the claims alone? Is it a sufficient disclosure to the Patent Office, in so far as later claims are concerned, if the subject matter of the later claims is disclosed to the Patent Office by the drawings and specifications, but not claimed? These questions present questions of law. The answer to these questions in so far as this motion is concerned, it seems to me, depends on the question of whether these reissue claims are broader and are for a new invention, and that presents a question of fact.

The contentions and the conclusions of the parties with respect to the questions in issue have been presented herein in quite considerable detail. One particular reason for this was to demonstrate that the claims in question relate to a complicated combination device and to the operation thereof. While we may incline to an opinion as to the merits of the respective positions taken, it is not believed that this is sufficiently sustained to meet the rule of determination on this motion. It is believed the court should have the benefit of some clear demonstration of the construction and operation of the device in question and that the experts be offered for examination and cross-examination before the court and opportunity to furnish any additional proofs should be given. The rule this court follows here is that which has been laid down in many cases. This rule in effect is that claims should not be stricken down unless the proof is such as leaves the mind of the court free from doubt. The language of the Supreme Court in Schneiderman v. United States, 320 U. S. 118, 63 S.Ct. 1333, 1345, 87 L.Ed. 1796, that the proof must be “clear, unequivocal and convincing” may well be applied here. In Doehler Metal Furniture Co. v. United States, 2 Cir., 149 F.2d 130, 135, the Circuit Court in this Circuit said: “We take this occasion to suggest that trial judges should exercise great care in granting motions for summary judgment. A litigant has a right to a trial where there is the slightest doubt as to the facts.” See: Weil v. N. J. Richman Co., D.C., 34 F.Supp. 401: Clair v. Sears, Roebuck Co., D.C., 34 F. Supp. 559; E. W. Bliss Co. v. Cold Metal Process Co., D.C., 47 F.Supp. 897.

There is this further to be said with reference to infringement of claim 20. While validity is not questioned on this motion, an issue of validity is made by the pleadings. Presumably some proof of prior art would be submitted upon the trial of the issue of validity. In Sinclair & Carroll Co., Inc. v. Interchemical Corporation, 325 U.S. 327, 65 S.Ct. 1143, 1145, it was said: “There has been a tendency among the lower federal courts in infringement suits to dispose of them where possible on the ground of non-infringement without going into the question of validity of the patent. * * * It has come to be recognized, 'however, that of the two questions, validity has the greater public importance, * * and the District Court in this case followed what will usually be the better practice by inquiring fully into the validity of this patent.”

The parties have briefed extensively the question of the application of the two year statute of limitations. They differ widely in their construction of recent decisions of the courts, particularly Muncie Gear Co. v. Outboard, supra; Allen v. Radio Corporation of America, D.C., 47 F.Supp. 244; Engineering Development Lab. Inc. v. Radio Corporation of America, D.C., 62 F. Supp. 464. It is not necessary that these cases be construed here, but their application should be considered upon the trial of the issues of fact.

The defendants’ motions to dismiss must be denied.