3,439,248 filed January 4, 1966, shortly after Frenzel's
original filing. Singer has recently filed interference #
97,893 in the Patent Office claiming prior invention.
35 U.S.C. § 102(g). This court has declined to await the outcome
of the interference proceeding, and defendant has filed
depositions of certain Singer personnel herein. We find that
these depositions do not establish priority of the Singer
device by the weight of the evidence. They show that Singer's
formal testing occurred in December 1965, considerably after
the filing date of Frenzel's original application, and that the
model allegedly constructed and operated by Singer personnel in
the Spring of 1965 was never used to drill any holes, was never
reduced to detailed production drawings or recorded in formal
testing documents, and was inoperable at the time of the
depositions in May 1971. Without purporting to rule on the
merits of Singer's pending interference, since it is not a
party herein, we find and conclude that defendant in the case
at bar has not established that the Winchester invention was
reduced to practice prior to Frenzel's device and therefore
cannot be anticipatory. Cf. Corona Tire Co. v. Dovan Chemical
Corp., 276 U.S. 358, 382-384, 48 S.Ct. 380, 72 L.Ed. 610
Defendant's manufacturing under Sahrbacker patent No.
3,603,757, issued September 7, 1971, constitutes infringement
of Frenzel's Claim 5. Frenzel and Sahrbacker use almost
identical elements in every material respect. The only
significant difference between them is in the type of
electrical switches used by each, and concededly they are not
part of either invention. Based on the evidence produced at
trial and an examination of the two patents, which the parties
agree illustrate and describe the devices, this court finds
that the Sahrbacker device performs substantially the same
function in substantially the same way to obtain the same
result as Frenzel's Claim 5 and therefore infringes it.
Standard Industries v. Tigrett Industries, 397 U.S. 586, 90
S.Ct. 1310, 25 L.Ed.2d 590 (1970); Graver Tank v. Linde Air
Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1950);
King-Seeley Thermos Co. v. Tastee Freez Industries, Inc.,
357 F.2d 875 (7th Cir. 1966), cert. den., 385 U.S. 817, 87 S.Ct.
38, 17 L.Ed. 2d 56 (1966).
The second portion of this case, concerning the alleged
invalidity of the Matthews patent, is considerably simpler to
resolve. Lucerne agreed to develop a switch to operate the
variable speed feature of a Skil electric tool. In order to
finance this development and obtain its fruits, Skil placed an
order with Lucerne for 100,000 switches on March 2, 1964,
calling for 25 to 30 samples to be delivered within two weeks.
Matthews, on behalf of Lucerne, developed a switch with a
horizontal rheostat and shipped some hand-made examples of it
to Skil in the Spring of 1964. They did not work
satisfactorily and Skil returned them.
On about July 4, 1964 Matthews conceived the idea of placing
the rheostat in a vertical position, and this change resulted
in a satisfactory switch. Lucerne shipped some examples of
this modified switch to Skil in July 1964, and Skil received
them for testing on August 8, 1964. No restrictions on
disclosure were imposed. Lucerne finished its tooling about
August 11 and began producing the new switches, although it
had no assembly line for quantity production. Over 1,000 of
these switches had been sold to Skil by August 20, 1964 and
Skil incorporated at least 449 with drills for sale in July
and August. Matthews did not file his application for the
modified switch until August 23, 1965.
Defendant admits that shipments of the switch with a
vertical rheostat were made to Skil before August 23, 1964 but
contends that this was for experimental or developmental
purposes.*fn* This contention is belied by the
fact that Lucerne made no significant changes in the switch
after July. Also these shipments were credited against the
purchase order for 100,000, and Skil paid Lucerne the agreed
price of $3.00 a unit. Finally, in other litigation, when it
was to defendant's advantage to establish an early sale date,
Matthews testified that Lucerne made sales of switches to Skil
in January through June 1964, without mentioning any
experimental use. Although the earlier sales involved the
switches with the horizontal rheostat, if they were not
experimental, the switches with the vertical rheostat were not.
We find and conclude that the switch had been commercially sold
to Skil and thereby dedicated to the public more than a year
before the filing date. See City of Elizabeth et al. v.
American Nicholson Paving Co., 97 U.S. (7 Otto) 126, 24 L.Ed.
1000 (1877); Watson v. Allen, 103 U.S.App.D.C. 5, 254 F.2d 342
The fact that Underwriters Laboratory did not approve the
switch with the vertical rheostat until September 3, 1964 does
not change the date of the first sale. Defendant notified
Underwriters that it was ready for testing of switches made
with production tooling on July 15, 1964. Even though Skil's
purchase order and defendant's product liability insurer both
required Underwriters' approval, neither of these facts
preclude Lucerne from producing and selling unapproved
switches as soon as they were ready. Matthews verily believed
the modified switch would work, and he would not be expected
to let his production facilities lie idle while awaiting the
UL approval. The crucial fact is the sale, not whether
defendant had UL approval or a final assembly line in
Plaintiff also introduced evidence that a magazine entitled
Electrical Equipment published a description and photograph of
the modified Matthews device shortly before August 23, 1964.
There is evidence from Post Office officials that this magazine
was mailed out over the weekend before August 24 (which was a
Monday) but no evidence that it was received by any subscriber
or purchaser before that date. Furthermore the description of
the switch in the magazine is not sufficiently detailed to
constitute publication within the meaning of 35 U.S.C. § 102(b).
Application of Le Grice, 301 F.2d 929, 936, 49 CCPA
1124 (1962); Accord Philips Electronic & Pharmaceutical
Industries Corp. v. Thermal and Electronics Industries, Inc.,
450 F.2d 1164 (3rd Cir. 1971); Bros Inc. v. W. E. Grace
Manufacturing Co., 351 F.2d 208 (5th Cir. 1965), cert. den.,
383 U.S. 936, 86 S.Ct. 1065, 15 L.Ed.2d 852 (1966). We find
that the evidence of publication is not sufficiently clear and
convincing to set aside the Matthews patent, although it does
tend to confirm that defendant was producing and selling the
switch to Skil more than one year before the date of Matthews'
It is not necessary at this stage of the case to reach
plaintiff's final point that withholding of information
concerning sales of switches with the horizontal rheostat
constituted such fraud on the Patent Office as would void the
patent. We find that the deposition of the former Solicitor of
the Patent Office, Joseph Schimmel, is admissible, but we do
not find that plaintiff has adduced the clear and convincing
evidence required to set aside a patent under such cases as
Beckman Instruments v. Chemtronics, Inc., 439 F.2d 1369 (5th
Cir. 1970). It perhaps
would have been the better part of candor to divulge this
information when filing the application, and we do not
preclude this apparent error of judgment from being raised in
connection with the question of fees and costs.
It is therefore ordered, adjudged and decreed that judgment
is entered in favor of the plaintiff Skil Corporation and
against the defendant Lucerne Products, Inc. on Count I as to
Claim 5 and on Count II, and the plaintiff is directed to
submit a judgment order in a form agreed to by the defendant
on April 9, 1973 at 9:30 a. m.