Slawski v. L. H. Eubank & Son
SLAWSKI v. L. H. EUBANK & SON
- Proceeding
- district
- Area
- civil
- Panel
- Jenney (author)
Analysis
The court reviewed a special master's report in a patent infringement action and overruled the master's finding that the plaintiff's patent claims were valid. The court held that Claims 3, 4, and 5 of Reissue Patent No. 18,223 were invalid as mere aggregations of elements without inherent functional relationship, and ordered the complaint dismissed with costs to the defendants.
| What the court decided | The model |
|---|---|
Claims 3, 4, and 5 of Reissue Patent No. 18,223 are invalid.“The court therefore holds that Claims 3, 4 and 5 of United States Letters Patent, Reissue No. 18223, in suit, are invalid.” | agree with court The court applied the 'aggregation' doctrine, citing Reckendorfer v. Faber and Pickering v. McCullough, to find that the claimed combination lacked an inherent functional relationship between its two groups of elements. This is a correct application of the law as it stood in 1940, where the Supreme Court had recently reinforced the requirement for a synergistic relationship in combination patents (Lincoln Engineering, Bassick Mfg.). The court's reasoning that the elements merely moved the board vertically and laterally without a new function or result supports the invalidity finding. |
The special master's report is approved in all respects other than the validity of the patent claims.“Otherwise, the findings and report of the special master are approved.” | agree with court The court accepted the master's findings regarding jurisdiction, title, and non-infringement. Since the patent was held invalid, the non-infringement finding is moot but consistent with the dismissal. |
Plaintiff's complaint is dismissed with costs to defendants.“Counsel for defendants will prepare and file appropriate findings of fact and a form of decree dismissing plaintiffs complaint, with costs to defendants.” | agree with court Dismissal follows logically from the invalidity of the patent claims. The order to prepare a decree is a standard procedural step. |
The order itself: sound — The order is sound. The court correctly applied the aggregation doctrine, which was the prevailing standard for combination patents at the time. It cited the leading Supreme Court cases (Reckendorfer, Pickering, Lincoln Engineering, Bassick) that established the requirement for an inherent functional relationship between elements. The court's analysis of the specific facts (two unrelated groups of elements moving the board vertically and laterally) supports the conclusion that the claims were invalid. The rejection of the plaintiff's argument based on Hurst is also consistent with the law of the time.
Opinion — Jenney
JENNEY, District Judge.
The report of the special master was filed on April 3, 1940. Objections thereto were filed by both plaintiff and defendants. Briefs in support of objections were carefully prepared and apparently covered fully the points of the respective parties.
The special master concluded:
(1) That this is an action arising under the patent laws of the United States over which this court has jurisdiction; (2) that title to Letters Patent No. Re. 18,223 is vested in the plaintiff; (3) that said Letters Patent and Claims 3, 4 and 5 thereof are good and valid; (4) that defendants have not infringed said Letters Patent.
Plaintiff in support of his objections to the report of the special master apparently contends, among other things, that he is entitled to a scope covering the movable pivot between the plate and the brace of defendants’ structure. In this he seems to the court to run into Hurst. Over Hurst he seems to have done nothing but confine one end of the movable brace in a slot. In this he seems to have an improvement of one element of a combination — with no new function or result. This brings the matter under the recent decisions of the United States Supreme Court in Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 58 S.Ct. 662, 82 L.Ed. 1008, and Bassick Mfg. Co. v. Hollingshead Co., 298 U.S. 415, 56 S.Ct. 787, 80 L.Ed. 1251.
The court feels that the special master erred in concluding “that said Letters Patent and Claims 3, 4 and 5 thereof are good and valid.” No good purpose would be served by a discussion here of the points urged by counsel. (Reference is made to the briefs, etc., on file.) It seems to the court, however, that the combination claimed by plaintiff is merely an aggregation of two groups of elements, between which there is no inherent functional relationship. One group functions to move the board from a vertical to a lateral *276position. Another and unrelated group operates to accomplish lateral adjustment of the board. This brings plaintiff under the ruling in the leading cases of Reckendorfer v. Faber, 92 U.S. 347, 23 L.Ed 719, and Pickering v. McCullough, 104 U.S. 310, 26 L.Ed. 749.
The court therefore holds that Claims 3, 4 and 5 of United States Letters Patent, Reissue No. 18223, in suit, are invalid. Otherwise, the findings and report of the special master are approved.
Counsel for defendants will prepare and file appropriate findings of fact and a form of decree dismissing plaintiffs complaint, with costs to defendants. .