thereafter discovered. Hall v. Bird, 11 Fed.Cas.page 211, No. 5,926; Gayler v. Wilder, 10 How. 477, 51 U.S. 477, 13 L. Ed. 504.
It is my opinion that claims 1 to 4 inclusive of Jungersen Patent No. 2,118,468 are valid. This finding of validity and patentability is further buttressed by two U.S. District Court decisions in which this same patent was found valid. Jungersen v. Jenkins et al., D.C., 30 F.Supp. 615; Jungersen v. Morris Kaysen Co., D.C., 31 F.Supp. 703. These prior adjudications, while not binding upon this court, are entitled to great weight. Standard Brands v. National Grain Yeast Corp., 3 Cir., 101 F.2d 814, 816. In addition to the above, patentability is further supported in the grant of patents by the United States and British patent offices. Many of the patents relied upon by the plaintiff were before the patent examiner.
Any remaining doubts that might linger as to novelty and validity would be resolved in favor of the defendant in view of the evident commercial success of the Jungersen process of which there is ample indication. Artcraft Silk Hosiery Mills v. Gotham, 3 Cir., 72 F.2d 47.
While claims 1 to 4 inclusive are found to be valid, it is my conclusion that claims 5 and 6, in the light of the prior art, and more particularly in view of Kralund patent No. 1,238,789, are anticipated and invalid.
Defendants, contending for novelty and validity, assert that claims 5 and 6 clearly and specifically claim the use of an applied force in depositing molten wax into the primary mold, thus in effect seeking to establish that step as a novel element in the claimed process, or else, by implication, they ask the Court to read the use of centrifugal force into the specifications of claims 5 and 6. The former contention must fail since the application of 'force sufficient to deposit the material' as specified in claim 5 is similarly taught by the prior patent to Kralund.
In his specifications Kralund instructs the making of the primary pattern by 'forcing molten material having a low fusing point into a metal mould or die under sufficient pressure to insure the filling of said mold or die'. Kralund thereafter invests the pattern in a mass of plastic material and generally follows the steps known to the art.
Neither may the use of 'centrifugal force' to deposit the material be read into and made a part of the specifications of claims 5 and 6. Claims of a patent are independent inventions and each constitutes a separate grant of monopoly. Each claim must be considered by itself both with respect to validity and infringement. One may be valid and the rest invalid. Wire Tie Machine Co. v. Pacific Box Corporation, 9 Cir., 102 F.2d 543; Sanitary Dist. of Chicago v. Activated Sludges, Inc., 7 Cir., 90 F.2d 727, certiorari denied 302 U.S. 736, 58 S. Ct. 121. 82 L. Ed. 569.
Neither may defendants construe claims 5 and 6 narrowly in order to preserve validity and broadly to secure a finding of infringement. De Cew v. Union Bag & Paper Co., supra. It has been stated that a claim which is capable both of broad and narrow construction in the light of the specification will be given the construction which sustains the patent. But where, from the specification or history of the application or language of the claim, it is clear that the patent office intended to grant the broader monopoly which turns out to be invalid, the courts will not for the arbitrary purpose of saving the claim read into it a limitation which it does not have. Aluminum Co. of America v. Thompson Products, Inc., 6 Cir., 122 F.2d 796.
It is noteworthy that while many of the patents cited by the plaintiff in contending for invalidity, appeared in the file wrapper before the patent office and before the Courts in prior adjudications (supra), the Kralund patent is inserted as an alleged anticipating patent for the first time in the present action.
In view of Kralund, it would appear that claims 5 and 6 amount to little more than an adaptation of an old process to a new use, clearly indicated by the prior art, and do not amount to invention. General Electric Co. v. Jewel Incandescent Lamp Co., D.C. 47 F.Supp. 818.
Thus, while it is the Court's view that the utilization of centrifugal force to introduce molten wax into the primary mould as described in claims 1 to 4 inclusive, is patentable invention, the mere specification of 'force sufficient' as set forth in claims 5 and 6 fails to achieve that distinction in the face of the plain indications of the prior art.
In view of these conclusions, only brief comment need be made on the charges of infringement. At the outset of this action, counsel for the defendant stated that the question of infringement involved only claims 5 and 6. No contention has at any time been made that plaintiff's process infringes upon claims 1 to 4 inclusive.
The issue of infringement being confined to claims 5 and 6 only, the Court's finding of invalidity of those claims necessarily results in a conclusion that plaintiff, Ostby & Barton, does not infringe upon the Jungersen patent. This conclusion likewise make unnecessary any finding by the Court into the charges of inequitable conduct directed against the other by both parties to this suit.
Through the consideration of the validity or non-validity of the various claims involved in the instant case, there has predominated the idea that patentability is a vexatious question, not determinable by an unyielding standard of easy application. Theories concerning it have varied through successive decades, at times easy acceptance of tenuous claims being succeeded by rigid requirements, which tended to discourage research and experimentation.
The yard sticks applied by various courts, differed in their inventiveness almost as completely as did the inventions that were submitted for appraisal.
With all courts assuming that invention implies the production of novelty through the exercise of imagination, and controlled by the announcement of the Supreme Court that there must exist 'a flash of creative genius, not merely the skill of the calling', the task of practical application of these principles is never an easy one.
Whether or not a flash of creative genius is revealed in any specific situation, depends on a number of factors, the sum total of which must serve to convince the court of the existence of the phenomenon of creative novelty.
In its construction of these principles, the court has arrived at its stated conclusions.
An order may be entered in accordance with the views above expressed.
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