Opinion
No. 960.
January 5, 1944.
Pitney, Hardin Ward, and Arthur J. Martin, Jr., all of Newark, N.J., and Harold T. Stowell, of Washington, D.C., for plaintiff.
Harry B. Rook, of Newark, N.J., Newton A. Burgess and Hanse H. Hamilton, both of New York City, for defendant.
Patent infringement suit by Rochester Button Company against Button Corporation of America.
Judgment in accordance with opinion.
Findings of Fact
The following facts have been agreed to by the parties hereto except as otherwise indicated:
1. Plaintiff, Rochester Button Company, is the owner of United States Letters Patent No. 2,084,427 granted to it as assignee of Neil O. Broderson.
2. The patent in suit relates to a method of making buttons having a plurality of thread holes by molding a plastic material between co-operating dies to shape the buttons and having thread hole forming pins in one of the dies to form thread holes therein leaving thin films of the material at one end of the thread holes (and a fin of equal thickness around the periphery of the button) and removing the films from the ends of the thread holes (and the fin from the periphery) by a tumbling action. As to this paragraph, the parties agreed except as to the statements in the parentheses. The statements in the parentheses were urged by defendant, and after hearing counsel, the Court approved paragraph 2 including the statements in the parentheses.
3. Plaintiff has used the above method extensively since 1934.
4. The method described in paragraph 2 above was used by defendant, Button Corporation of America, from early 1939 to about August, 1939, after which date defendant has removed the films from the thread holes by brushes which reciprocate, causing the bristles of the brushes to punch the films out of the holes, followed by the usual tumbling operation in common use prior to any date claimed by plaintiff for the patent in suit.
5. Parker patent No. 628,030 relates to a method of perforating glass articles, particularly salt and pepper containers, by forming the glass article with co-operative dies having hole forming projections on one of the dies, (leaving films at one end of the holes) and thereafter grinding down the face of the molded article until (the films are removed and) the holes formed by the projections are exposed. As to this paragraph, the parties agreed except as to the statements in the parentheses. The statements in the parentheses were urged by defendant and, after hearing counsel, the Court approved paragraph 5 including the statements in the parentheses.
6. Keller patent No. 1,633,531 relates to the production of spray discs by co-operating dies from a moldable material, such as clay, in dies having projecting hole forming tapered pins in one part thereof to form apertures with thin films at one end of the holes on the surface of the disc, and washing the films of material from the ends of the apertures by means of a wet sponge.
7. Davidson patent No. 2,087,470 relates to a method of making buttons by molding a plastic material between co-operating dies having hole forming pins in one of the dies and corresponding recesses in the other die into which the pins project in the molding operation to form protuberances at the ends of the thread holes, and subsequently breaking off the protuberances by means of a device having pins which project through the thread holes.
8. The Davidson patent was granted on July 20, 1937, on an application filed in the United States Patent Office on February 17, 1934. A corresponding application was filed in the Canadian Patent Office on June 28, 1933.
9. The patent in suit was granted June 22, 1937, on an application filed in the United States Patent Office on April 21, 1934.
10. Neil O. Broderson conceived the method described in paragraph 2 above on about January 22, 1934, and disclosed it to others on said date.
This is a patent suit arising on Letters Patent No. 2,084,427, dated June 22, 1937, issued to Neil O. Broderson and assigned to plaintiff. Plaintiff complains of infringement. Defendant denies infringement and alleges invalidity of the patent.
The invention relates to a method of making buttons of plastic material. There are three claims in the patent, of which Claim 1 is typical and sufficient for present purposes. It reads as follows:
"What is claimed is:
"1. A method of producing buttons having a plurality of holes, consisting in forming a button of plastic material in a sectional mold provided on one of its sections with a plurality of tapered thread hole forming pins of a length to extend substantially through the molded button and into substantially abutting relation with a concaved surface on the other mold section to form thin films of plastic material on the button at the minor ends of the holes at the back of the button, removing the button from the mold, and then removing the said films by a tumbling action against the exterior surface of the button."
An examination of the file wrapper discloses that the applicant endeavored to obtain a claim sufficiently broad to cover the molding of a button leaving thin films of plastic material covering the bottom ends of the thread holes. The examiner refused to acquiesce in this and the applicant instructed cancellation, whereupon the examiner limited the claims to a removal of the films by tumbling. The situation thus created amounts to a file wrapper estoppel and prevents the patentee from claiming removal of the films by any other method or means than tumbling.
It appears from the findings of fact hereto annexed, that the defendant followed the practice and teaching of the patent in removing the films from thread holes from "early 1939 to about August 1939", and if the patent is valid, the defendant infringed during that period. Thereafter, however, the defendant removed the films by the use of reciprocating brushes and polished off the rough edges of the holes in the same tumbling operation resorted to for the purpose of smoothing off the edges or films left on the periphery of the buttons. By reason of the file wrapper estoppel the defendant cannot be said to infringe in this latter method since the film was removed not by tumbling but by reciprocating brushes. The tumbling method was old in the art and long had been applied to the removal of the film from the outer edges of the buttons. The polishing off of the edges of the thread holes by tumbling after the brushing operation had removed the film, was a mere application of the tumbling process to another use, not a different use, and it produced no new result. Therefore there was no infringement in this connection.
It is my view that the patent is invalid because there was nothing patentable in beating out the films at the ends of the thread holes by the process of tumbling. The method of tumbling being old when applied to the outer periphery of buttons is open for use when applied to the films at the ends of the thread holes. Moreover, it would seem to be clearly within the skill of the art.
An order will be entered in conformity herewith.