# Tatko Bros. Slate Co., Inc. v. Matthew Hannon

> Court of Appeals for the Second Circuit · September 11, 1959 · 270 F.2d 571

URL: https://www.frixlaw.com/law-library/cases/9447006

## Case

- **Full name:** TATKO BROS. SLATE CO., Inc., Plaintiff-Appellee, v. Matthew HANNON, Defendant-Appellant
- **Court:** Court of Appeals for the Second Circuit
- **Decided:** September 11, 1959
- **Citations:** 270 F.2d 571; 122 U.S.P.Q. (BNA) 585; 1959 U.S. App. LEXIS 5523
- **Precedential status:** Published
- **Opinion:** Dissent by Madden
- **Judges:** Clark, Madden, Claims, Hincks
- **Cited by:** 16 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9447006

## Opinion text

MADDEN, Judge
(dissenting).
The Court rightly concludes, as did Judge Gibson in the District Court, that the prior decision involving this same patent, and holding it invalid, Vermont Structural Slate Co. v. Tatko Bros. Slate Co., D.C., 134 F.Supp. 4 , affirmed by this Court, 233 F.2d 9 , is not a bar to the plaintiff’s suit. The instant case being, then, open for normal appellate treatment, has not, I think, received such treatment at the hands of the Court. A crucial finding of fact of the District Judge has, it seems to me, been, without justification, discarded.
Judge Gibson found, as the Court recites, that “for a considerable length of time, people skilled in the trade worked to devise an effective pallet for the purpose of easily and safely handling flagstone and slate, but this innovation [i. e. the slotted pallet] escaped them.” [ 157 F.Supp. 280 .] The Court says that this does not prove that the innovation was not obvious in the industry because, at the time, not many enterprises in the building supply industry were equipped with fork-lift trucks, and therefore there was not much call for double-floored pallets. But Judge Gibson found that there were several enterprises of considerable size which faced the problem, attempted in various ways to solve it, did not find a satisfactory solution, and immediately copied the plaintiff’s solution when it became public.
The philosophy of the instant decision, as I see it, is the same as that of the District Court and this Court in the Vermont Structural Slate Co. case, supra, i. e. that the plaintiff’s device is so simple and obvious that it does not rise to the dignity of an invention. Some of the language of Judge Foley in the Vermont Structural Slate Co. case is revealing as to why he reached that conclusion. He wrote, 134 F.Supp. at page 5 .
“The patent involved in this motion and lawsuit is one of unbelievable simplicity. This statement finds the most support in the fact that I was able to comprehend with some ease the nature, purpose and function of its design from a reading of the patent, the descriptions in the pleadings and affidavits, an inspection of the photographs and a view of the physical exhibits that were demonstrated by the defendant upon the argument of the motion. * * ”
And in this Court, the late Judge Jerome Frank wrote that invention was plainly lacking, the question of invention “was not at all close” and “The patent disclosed no more ingenuity than that of a man skilled in the art.” [ 233 F.2d 11 .]
For the judges, after the plaintiff’s device had been disclosed, and had been quite universally adopted in the industry, it was obvious that that was the way to solve the difficulty. Why then did the people in the industry submit, even though only a few of them directly faced the problem, and even though only a few years elapsed before the plaintiff’s solution was disclosed and immediately adopted, to the bedevilment of having their loads slip off the pallets and be scattered on the highway, to having their cumbersome sideboards use up unnecessary space in returning the pallets to the quarries, to having their loose stakes get broken and lost?
The case seems to me to be getting itself decided, not on the basis provided by precedent and recent statute, of obviousness to those in the industry, but of obviousness to the judges after the patent has disclosed the device and the industry has adopted it. This seems to me to be a failure by the Court to adjust itself to the purpose and spirit, the “mood,” see Universal Camera Corp. v. National Labor Relations Board, 340 U.S. 474, 487 , 71 S.Ct. 456 , 95 L.Ed. 456 , of *575 Section 103 of Title 35 United States Code, enacted in 1952.
The patent here in question was not a great patent. It required no Franklin, Faraday, Edison, or Marconi to conceive it. But the device was highly useful, it was admittedly new, and on its modest level, it was, I venture to say for myself, ingenious. I think it was worthy of a valid patent, which the courts should protect.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9447006. Public record. Not legal advice.