(h) The business of petitioner is efficiently and economically operated.

On June 14, 1933, the Tariff Commission instituted an investigation for the purposes of section 337 of the Tariff Act of 1930 with respect to cigar lighters made in accordance with the terms of United States Letters Patent No. 1673727, or in simulation of such lighters. The Commission recommended to the President exclusion from entry except under bond of cigar lighters made in accordance with the terms of said patent, and on July 6, 1933, the President requested the Secretary of the Treasury to forbid entry except under bond of such lighters, in accordance with the provisions of subdivision (f) of section 337. On July 8, 1933, the Secretary of the Treasury issued instructions to collectors of customs in accordance with the President's request.

On July 8, 1933, the Commission published notice of its investigation and sent copies of such notice and copies of the petition to Fukashiro-Shoten, 18/4 Bakuro-Cho, Nihombashi-ku, Tokyo, Japan; H. Ichikawa & Co., Tokyo Kiajo Building, Marunouchi, Tokyo, Japan; Wadasho & Co., 88 Honden Sanbancho, Osaka, Japan; K. Yoshimura, 65 Kumochicho Rochuchome, Kobe, Japan; Sangoku Boeki Kaisha Ltd., 8 Yumacho Kyobashi-Ku, Tokyo, Japan; Weinstein Co., 615 Market Street, San Francisco, Calif.; Rhine Optical Co., Inc., 150 Post Street, San Francisco, Calif.; J. O. Kingstone, 717 Market Street, San Francisco, Calif.; Iwata Trading Co., Inc., 251 Post Street, San Francisco, Calif.; American Import Co., 515 Market Street, San Francisco, Calif.; Union Importing Co., 120-124 South Los Angeles Street, Los Angeles, Calif.; and Greenberg & Josefsberg, 20 West Twenty-third Street, New York, N.Y.; all of whom are named as respondents in the complaint.

In the notice of investigation provision was made for answer by respondents on or before September 11, 1933, to show cause why the provisions of section 337 should not be enforced against them, and notice was given of a public hearing to be held by the Commission in said investigation at its office in Washington, D.C., at 10 o'clock a.m. on September 19, 1933, at which time and place all parties interested would be given opportunity to be present, to produce evidence, and to be heard with reference to the subject matter of the investigation.

Having been informed by counsel for complainant that parties not named in the complaint had come to his attention as possibly being interested in the investigation, the Commission, on July 21, 1933, sent copies of the complaint to the Leonace Import Co., 10 East Thirty-third Street, New York City, and to Kanamura Shoten, 19 Suga-Cho, Asakusa, Tokyo, Japan. Copies of the notice of investigation were also sent to New York Merchandise Co., 860 South Los Angeles Street, Los Angeles, Calif., New York Merchandise Co., 32 West Twenty-third Street, New York City, and Shin, Sendo & Co., 8 Nakano 5-chome Kitaku, Osaka, Japan, on that date.

Pursuant to application of complainant for the taking of the deposition of Mr. Henry C. O'Neill, of Seattle, the Commission appointed Mr. Ellis DeBruler (a representative of the Federal Trade Commission) as its agent to take the deposition of Mr. O'Neill and such other persons as wished to depose concerning the subject matter of questions submitted by complainant. The deposition of Mr. O'Neill

was taken on September 1, 1933, at 801 Federal Office Building, Seattle, Wash. No other persons appeared to depose. This deposition forms a part of the record in this investigation.

On August 21, 1933, the Commission received from the Rhine Optical Company Inc., one of the respondents named in the complaint, a letter stating that said company had never stocked or sold any lighters infringing on the patent of the Art Metal Works, Inc. On August 22, 1933, the Commission received from Bert Friedberg & Co., to whom had been sent a copy of the notice of investigation, a letter to the same effect. On September 14, 1933, the Commission received from Fukashiro Shoten, Tokyo, one of the respondents named in the complaint, a letter denying that cigar lighters made by that company infringed United States patent no. 1673727 and admitting the sending of samples to the United States but denying any business with the importers in the United States. In view of the fact that this letter was not received within the time fixed by the Commission for filing answers and of its informal nature, the Commision suspended decision on whether or not to accept it as an answer until counsel for complainant had opportunity to object if he so desired. Counsel for complainant made no objection and the letter was accepted as an answer at the hearing.

The hearing was held in Washington, D.C., on September 19, 1933. The Commission fixed October 9, 1933 as the date for filing of briefs. At the hearing the Commission granted leave to counsel for complainant to file a certified copy of the patent involved (exhibit 2) after the hearing in place of the uncertified copy offered at the hearing. This was done and the certified copy is exhibit 2. The Commission also granted leave to counsel for complainant to file an advertisement published by certain Japanese producers of cigar lighters. On October 14, 1933, counsel informed the Commission that his clients had been unable to obtain a copy of such advertisement.

The Commission requested that it be furnished with three cigar lighters, one of which was the subject of settled litigation under the patent and another of which is involved in a pending suit. One, the Evans roller-bearing lighter, is exhibit 42, and another, the Marathon lighter, the subject of pending litigation, is exhibit 43. The Thorens lighter is exhibit 44.

Counsel for complainant also submitted after the hearing a letter from the collector of customs at San Francisco identifying exhibit 36. This letter was admitted as a part of the exhibit.

Complainant was the only party represented at the hearing, and produced evidence in support of its contention that the imported cigar lighters were infringements of its patents and so simulated its product as to amount to unfair competition. Further, that its business was efficiently and economically operated and that the effect or tendency of imports was to substantially injure its business.

FINDINGS

PATENT INFRINGEMENT

Witness Neal, testifying as a patent expert, expressed his opinion that exhibits 8, 10, 11, 13, 14, 16, 18, 19, 20, 21, 22, and 23 (which. together with exhibits 29 and 33, constitute all the imported lighters

56029-342

offered in evidence) infringe claim 13 of the patent. With respect to several of the lighters he testified that they doubtless infringed other claims.

United States Patent No. 1673727 has been the subject of litigation. (Art Metal Works, Inc. v. Abraham & Straus, Inc., 61 Fed. (2d) 122; certiorari denied, 287 U.S. 657.) In that litigation claims 2, 7, 12, 13, and 14 were held valid and infringed by the two lighters concerned. No claims of the patent have been held invalid. Under the doctrine of the Bakelite case (17 C.C.P.A. 494, 509 et seq.; certiorari denied, 282 U.S. 852; see also 60 Fed. (2d) 711; certiorari denied, 287 U.S. 649), the Commission must treat as valid certified patents which have not been declared invalid by a court of competent jurisdiction. The Commission accordingly accepts all claims of the patent here involved as valid.

The invention the subject of United States Patent No. 1673727 consists, broadly speaking, of a cigar lighter having in combination a receptacle and abradant wheel centrally disposed over the top of said receptacle and journaled about a horizontal axis, a pyrophoric member cooperating with said wheel, a wick projecting from the receptacle on one side of the wheel, a snuffer for the wick, a finger piece on the opposite side of the wheel from the wick, said finger piece being mounted independently of the snuffer, and a gear means whereby operation of said finger piece will operate the wheel and snuffer by manual pressure. In the specifications this gear means was described as a rack on the finger piece and a gear attached to the snuffer. In the case of Art Metal Works, Inc. v. Abraham & Straus, Inc., supra, the Circuit Court of Appeals for the Second Circuit ruled that a connection between the finger piece and snuffer effected by the insertion of a pin attached to the finger piece in a slot on the snuffer was the equivalent of the gear means specified in claims 7, 13, and 14.

None of the imported lighters offered as exhibits contains a rack on the finger piece and a gear on the snuffer as those terms are commonly understood, but the connection is effected by means of a pin and slot quite similar to the pin and slot involved in the case last mentioned, or by a rivet. The Commission finds that the connection between the finger piece and the snuffer in exhibits 8, 11, 13, 16, 18, 19, 23, 29, and 33 is the equivalent of a gear means. Having decided that the means connecting the finger piece with the snuffer on these exhibits is the equivalent of a gear means, it is apparent that each of these exhibits is described in claim 13 of the patent, and the Commission so finds. Certain of the exhibits undoubtedly fall within other claims of the patent, but the Commission deems it unnecessary to make a detailed discussion thereof.

With respect to exhibits 10, 14, 20, and 21, the Commission does not agree with complainant's contention that these infringe the patent. In each of these exhibits the snuffer is raised and the abradant wheel is revolved, chiefly by means of energy stored up in a spring by the closing of the snuffer and released by downward pressure on the end of the finger piece farthest from the wick. In Art Metal Works, Inc., v. Abraham & Straus, Inc., 2 Fed. Supp. 677, 679, the United States District Court for the Eastern District of New York, after the decision of the Circuit Court of Appeals, supra, ruled that the question of infringement of a so-called "Trig

a-lite "lighter, which was a spring-actuated lighter and in which the spring formed the connection between the finger piece and the snuffer, was not so clear as to warrant a preliminary injunction. The Commission is of the opinion that a lighter in which the chief force lifting the snuffer and revolving the wheel is derived from energy which has been stored up in a spring is not operated by manual pressure as required in claims 2, 4, 5, 7, 8, 10, 11, 12, 13, 14, and 15 of the patent, nor do the spring operated exhibits fall within the other claims of the patent. The claim constituting the closest description of exhibit 10, for example, is claim 3, which requires a gear member for operating the snuffer and a rack member for operating the gear member. The Commission does not believe that the two arms or shafts attached to the snuffer by screws and to the finger piece through the tension of a spring within the finger piece may be considered the equivalent of a rack and gear within the decision of the Circuit Court of Appeals, supra. Our reason is that the rack and gear or pin and socket passed upon by the Circuit Court of Appeals have the effect of causing the exact movement of the finger piece to be transmitted to the snuffer and keep said finger piece and snuffer in constant engagement with each other. The arms or shafts of exhibit 10, however, do not transmit, except in a limited and inconsequential manner, the movement of the finger piece to the snuffer and do not keep said finger piece and snuffer in constant engagement but permit the adjacent ends of the finger piece and snuffer to move a substantial distance apart. In short, it may be said that the arms or shafts do not perform the same function of the rack and gear or pin and socket in substantially the same way. What has just been said regarding exhibit 10 applies to exhibits 14, 20, and 21.

The Commission finds that exhibit 22 infringes claim 3 of the patent. This claim does not in words require the operation of the lighter by manual pressure and while the specifications apparently require that the lighter be operated by manual pressure the Commission does not believe its jurisdiction to determine infringement extends to writing into claims of a patent language which is not in the patent as granted by the Patent Office. There is no court decision on this patent which warrants the insertion of the words "manual pressure" into claim 3. The metal arm attached to the snuffer by a screw and to the finger piece in the same manner appears to serve the function of the rack and gear mentioned in claim 3 in substantially the same way as a rack and gear. This connection transmits the movement of the finger piece to the snuffer by direct and constant action and keeps the finger piece in constant engagement with the snuffer. To sum up our findings, we find that exhibits 8, 11, 13, 16, 18, 19, 22, 23, 29, and 33 infringe the patent.

SIMULATION

Exhibits 8, 11, 13, 16, 18, 19, 23, 29, and 33 resemble complainant's Ronson cigar lighter very closely and might readily cause confusion in the mind of a casual observer. The markings on these imported lighters are immaterial for the purposes of this discussion. However, the Commission is not satisfied that Art Metal Works, Inc., is entitled to a monopoly on the size, shape, and general appearance of

the functional features of these lighters. It is true that there is no evidence before the Commission to the effect that anyone had adopted the designs in question prior to complainant and it is also true that complainant's witnesses testified that cigar lighters having the socalled "one, two, three " operation might be made without resembling complainant's lighters. However, various types of cigar lighters operated by triggers, thumb pieces, and the like, and containing a snuffer to extinguish the wick appear to have been made for a considerable period prior to the issuance of the Ronson patent. The record does not show this fact, but the Commission believes it is a matter of such general knowledge that it may take notice of it sua sponte. In this state of the record the Commission does not find that the imported lighters so simulate complainant's lighters as to warrant an order of exclusion based on such resemblance. It must be pointed out that in any event lighters similar to the exhibits last mentioned infringe complainant's patent and should be excluded from entry on that ground, at least during the life of the patent. It would appear, accordingly, that for the present complainant is receiving all the relief to which it is entitled. The exhibits found by the Commission not to infringe the patent do not simulate complainant's lighters closely enough to warrant a finding of unfair competition on that score.

EFFICIENT AND ECONOMIC OPERATION AND INJURY

Over a period of roughly 6 years complainant has, through extensive_advertising and sales effort and through the excellence of its product, established a very valuable reputation and has sold a considerable number of cigar lighters in the United States. The Commission finds that its business is efficiently and economically operated. Due to the nature of the imported article concerned the Commission has been unable to ascertain the extent of imports, but the record does justify a finding that imported lighters infringing complainant's patent have been offered for sale and sold at retail in the United States, and that Japanese manufacturers and exporters have solicited trade in the United States. The natural and probable effect or tendency of these solicitations and sales is to render substantial injury to the business of complainant and the Commission formally so finds.

RECOMMENDATION

The Tariff Commission recommends that the President direct the Secretary of the Treasury to instruct customs officers to exclude from entry into the United States until and including June 11, 1945, cigar lighters patented in United States Letters Patent No. 1673727, except where the importation is made under license of the registered owner of said United States Letters Patent.