Gould Storage Battery Co. v. Electric Storage Battery Co.

COXE, Circuit Judge. The complainant insists that letters patent No. 570,224 granted to Albert F. Madden, October 27, 1896, assigned to the Electric Storage Battery Company, the defendant, belongs to it, together with the invention and improvements covered by the ten •claims thereof. A decree is asked compelling the owner of the patent to assign it to the complainant and for other relief. The patent relates to a new and useful machine for making grids for secondary battery plates. The specification says: “The principal objects of my present invention áre, first, to provide a comparatively simple and effective machine for expeditiously and comparatively inexpensively tranforming, reducing, and preparing the lead of blanks to a different state well suited to fulfill storage-battery requirements while shaping or manufacturing them, and, second, to so construct, combine and [33] arrange the various parts of the machine as that the same is adapted for the production of grids of various sizes and kinds; and to these ends, my invention consists of the improvements hereinafter described and claimed. The mode of operation of a machine embodying features of my invention is such that portions of a lead blank held against edgewise expansion are gradually displaced, for example, by repeatedly embedding devices into it, thereby increasing its density and squeezing up face-hardened bars, ribs, or the like above the original face of the plate.” The application for this patent was filed! January 11, 1896. On November 19, 1895, Madden applied for another patent for improvements in battery grids and machines for producing the same, and on December 1, 1896, a patent, No. 572,363, issued thereon to Van Winkle and Chamberlain,'which patent is now owned by the complainant. The specification states: “The object of my invention, therefore, Is to make a secondary-battery plate or grid with shelves or partitions which will have a molecular structure of uniform' density throughout, and at the same time offer the largest possible surface for chemical or electrochemical action, and will be cheap to manufacture. To this end I first produce a lead blank of any suitable dr desired shape and subject It to the spinning action of the rollers provided with outing-disks, ’which I will hereinafter fully describe. By subjecting the plate of lead or other flexible material adapted for secondary-batteries to the spinning action of the series of metallic disks, the molecular structure and density of the shelves or partitions are rendered absolutely uniform throughout, while the integral supporting-frame surrounding the shelves is of a different density (less dense than the spun shelves), and I thereby secure a supporting structure or grid than can be relied upon when subjected to the chemical or electrochemical action for producing the active material.” The complainant, therefore, owns a patent granted to Madden, which was applied for November 19, 1895, and issued December. 1, 1896, and the defendant owns a patent granted! to Madden which was applied for January 11, 1896, and issued October 27, 1896. The complainant’s patent was, therefore, applied for about two months before the defendant’s patent and was issued about one month thereafter. We agree with Judge Hazel in thinking that the relief demanded by the complainant cannot be granted and concur generally in his reasoning which it is unnecessary to repeat. We will briefly state our own conclusions : [1] First. — -The bill demands extraordinary relief, viz., that the legal owner of a patent assign it to the complainant, who is the owner of another patent granted to the same inventor upon an earlier application, on the ground that the two patents cover the same invention, which invention was transferred to the complainant. The presumption is that the two patents do not cover the same invention, and the burden is heavily on him who asserts to the contrary. It would require cogent proof to convince the court that the Patent Office would, within a month, issue two patents for the same invention to the same inventor. Such proof has not been presented. [2] Second. — The complainant’s patent contains 12 claims and the defendant’s patent 10 claims. A cursory glance at these claims demonstrates the proposition that many of the claims of the latter patent cover improvements and combinations not found in the former and [34] not conveyed to complainant. And yet the relief demanded is that all theáe claims shall be transferred to the complainant. The defendant’s patent cannot be split up; it must be transferred in its entirety. If it be so transferred, the complainant will become the owner of claims to which it has no shadow of title. Conceding, for the moment, the rectitude of the contention that the broad invention belongs to the complainant, it is, nevertheless manifest, that such an assignment transferring’ to complainant claims for combinations and improvements which do not belong to it would work a manifest injustice. [3] Third. — It is undoubtedly true that by the assignment of July 30, 1895, Madden transferred to the complainant’s assignors “the full and exclusive right to the said invention — viz., certain new and useful improvements in battery grid spinning machines, process and product —as fully set forth and described in the specification executed by me preparatory to obtaining letters patent of the United States therefor, and the full and exclusive right to any and all reissues, extensions or divisional applications thereof.” This assignment was not recorded until November 19, 1895, more than three months from its date. It may be conceded that all that the assignment mentioned was transferred, but the concession does not materially assist the solution of the controversy for the reason that the dispute arises as to what the “said invention” was. It surely did not cover other inventions then existing or thereafter to be made by Madden. The defendant contends that the “said invention” thus assigned related to improvements in battery grids of a peculiar formation and to the machine for producing the same. The machine was known as a “spinning” machine which produced grids by the welhknown spinning operation, “spinning-rolls” being elements of ten of the twelve claims. The opinion below points out 'six instances of dissimilarity between the defendant’s machine and the machine which the complainant secured from Madden, with corresponding differences in the resulting product. The machine which the complainant bought is a grid spinning machine producing a spun grid; the defendant’s machine produces a grid by the rolling process. There is evidence to support the contention that Madden did not intend to sell and did not sell anything but the specific invention of the spinning machine and its product. That he did not intend to part with other inventions which he had conceived or might conceive thereafter is manifest. There is also evidence to support the proposition that the invention which he sold to the defendant was for a machine,' and improvements thereon, which produced a different grid by a different method from that sold to the complainant. It is not necessary for us to decide this question definitely, it is enough that there is too much doubt as to the correctness of the complainant’s contention to justify us in destroying in toto the defendant’s title. Fourth. — Each party has sued the other for infringement and we see no reason to doubt that the complainant can, if it proves its contention, qbtain adequate relief in the action pending in New Jersey. Indeed, both parties can obtain relief commensurate with their respective rights-. In the complainant’s action relief is demanded that the defendant’s patent, No. 570,224, be repealed as an interfering patent. [35] To grant the drastic decree now asked for would prejudge these actions and leave the defendant defenseless with neither sword nor shield. This unfortunate controversy could have been'avoided had the inventor been less disingenuous and had the parties'observed wíthn greater care some of the precepts of the Decalogue.' Neither party is blameless, but we are unable to say that the proof preponderates so strongly in favor of the complainant as to justify us in granting the extraordinary ielief demanded. The decree is affirmed, with costs: