1930. If there was invention in this saw-tooth formation, it was that of Travis, and not of Cheney. We therefore hold this Patent No. 1,871,585 invalid for want of novelty.
Patent No. 1,939,619.
Claim 8 of this patent is in suit. It reads as follows: "8. A sheet metal flashing for masonry structures and the like comprising a sheet of metal of desired width to extend through a masonry wall and provided with transversely extending parallel ribs and grooves across the sheet so that the grooved portions thereof intermediate said ribs constitute drainage areas for draining water of infiltration across said sheet and from said wall, the ribs of said sheet having side faces presenting undercut recesses on opposite sides of the sheet for the reception of mortar which, upon hardening, will bond the flashing sheet in said mortar against movement vertically and longitudinally, the ends of said sheet being adapted for cooperative engagement with adjacent sheets whereby a plurality of sheets may be connected together to form a continuous metal flashing."
This claim differs only from the subject matter claimed in Cheney Patent No. 1,715,000 hereinbefore discussed, in that the ribs of the flashing are parallel. The plaintiff contends that two forms of flashing are shown in this Patent No. 1,715,000 -- one form being shown in Figure 1, and the other in Figure 5. The application for this patent was filed November 30, 1927, and the patent was granted May 28, 1929. Patent No. 1,939,619 was granted December 12, 1933, on an application filed February 3, 1932, which states that the invention "relates in part to features disclosed in my Patents Nos. 1,715,000 and 1,728,955 * * and the subject-matter of the present application, which presents certain specific characteristics not claimed in my prior patents above referred to, is taken from my prior copending application, Ser. No. 499,498, filed December 2, 1930, of which this application is a division."
In this situation, we cannot see that there is any tie-in between plaintiff's first patent application and the application on which Patent No. 1,939,619 was granted, because there is an interim between November 30, 1927, the date when the application for Patent No. 1,715,000 was filed, and December 2, 1930 (the date when the application for Patent No. 1,728,955 was filed), during which there was no copending application on file in the Patent Office covering the same subject matter of the first patent. We therefore hold that what was shown in Patent No. 1,715,000 and not claimed, is presumed to be dedicated to the public.
As to Patent No. 1,728,955, we cannot find that it is at all helpful on plaintiff's theory of divisional application. Claim No. 8 was inserted by amendment of November 3, 1933, to the application for Patent No. 1,939,619. It was introduced as Claim 16, which became Claim 8 of the patent; and it was stated to be directed to the same subject-matter as Claim 12, which was first introduced into the application by an amendment filed July 27, 1933, which apparently was the first time any claim was made for novelty in parallel ribs and grooves. We therefore have a gap of four years from the date of issue of Patent No. 1,715,000 on May 28, 1929, to July 23, 1933, during which time there was no claim of novelty resting in the parallel-rib construction disclosed in Figure 5 of Patent No. 1,715,000 in any pending application. This is, therefore, not a case for the application of the rule as to copending application. See Summerhays v. Coe, Com'r of Patents, 70 App.D.C. 194, 105 F.2d 73; Ely Norris Safe Co. v. Mosler Safe Co., 2 Cir., 62 F.2d 524; Webster Electric Co. v. Splitdorf Electrical Co., 264 U.S. 463, 471, 44 S. Ct. 342, 68 L. Ed. 792.
As to the alleged copending application for patent filed December 2, 1930, the parallel-rib structure was admittedly in use for more than two years prior to that time, as shown in Cheney catalogue marked Defendants' Exhibit C, which stated that in September, 1928, Hegeman-Harris Co. Inc., had used this structure in Dartmouth College.
The prior art also shows the parallel-rib-and-groove structure. See Schlafly Patents Nos. 1,093,653 and 840,016. We therefore conclude that Cheney Patent No. 1,939,619 is invalid.
Having the views above expressed as to the validity and non-infringement of the patents in suit, we find it unnecessary to pass on the question of whether plaintiff's right to relief is barred by laches and unfair conduct of plaintiff in notifying customers of defendants of the alleged infringement of plaintiff's patents.
We conclude that the plaintiff's complaint herein should be dismissed.
As to defendants' counterclaim in which defendants are seeking an injunction and accounting against plaintiff because of alleged malicious threatening of persons with whom defendants did, or attempted to do business for the purpose of discouraging the purchase of defendants' material, we cannot find that defendants have made out a case. As we view the law, notices given, or circulars distributed, to warn against infringement, are legal and proper. It is only when they are given and distributed in bad faith and solely for the purpose of destroying the business of another that they be enjoined. See A.B. Farquhar Co. v. National Harrow Co., 3 Cir., 102 F. 714, 49 L.R.A. 755.
We cannot find that the plaintiff acted in bad faith. It owned patents which it believed to be valid, and notified defendants and their customers of alleged infringement. We see nothing wrong in this. The defendants' counterclaim will be dismissed.
Findings of fact and conclusions of law in accordance with this opinion are filed herewith.
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