191 F.2d 522 (9th Cir. 1951), 12485, Leishman v. General Motors Corp.

Docket Nº:12485.
Citation:191 F.2d 522, 91 U.S.P.Q. 190
Party Name:LEISHMAN v. GENERAL MOTORS CORP.
Case Date:August 13, 1951
Court:United States Courts of Appeals, Court of Appeals for the Ninth Circuit
 
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Page 522

191 F.2d 522 (9th Cir. 1951)

91 U.S.P.Q. 190

LEISHMAN

v.

GENERAL MOTORS CORP.

No. 12485.

United States Court of Appeals, Ninth Circuit.

August 13, 1951

Leroy J. Leishman, in pro per. (John Flam, Los Angeles, Cal., of counsel), for appellant.

Leonard S. Lyon, Leonard S. Lyon, Jr., Los Angeles, Cal., for appellee.

Before BIGGS, [*] HEALY and POPE, Circuit Judges.

POPE, Circuit Judge.

This is an appeal from a judgment holding claims 7 to 11 inclusive of appellant's reissue patent No. 20, 827, to be invalid.

The appellee General Motors Corporation, as plaintiff, filed its complaint against defendant, appellant Leishman, seeking a declaratory judgment that such claims of appellant's patent were invalid and not infringed by the automatic radio tuning devices manufactured by the appellee. The defendant put in issue the allegations of the complaint and by counterclaim asserted that said claims of such patent were valid and infringed by appellee's tuners. He asked for an accounting and an injunction.

The trial court found that the claims of appellant's patent were invalid because of anticipation and lack of invention, and a judgment to that effect was accordingly entered.

Page 523

The subject matter of the suit pertains to automatic tuning devices for radio receivers, devices by which a radio receiver may be tuned to particular stations by simply pressing a lever or pushing a button.

Appellant's patent has been fully described in the reports of other decisions of this and other courts which have dealt with the question of the validity or of the infringement of this same patent. In Leishman v. Associated Wholesale Electric Company, 1941, 36 F.Supp. 804, Judge Harrison, for the District Court of the Southern District of California, determined that the same claims of the same patent were invalid for lack of invention. Upon appeal to this court the judgment was affirmed, Leishman v. Associated Wholesale Electric Co., 9 Cir., 137 F.2d 722, upon the ground that the claims, if valid, were not infringed by the accused device. The court therefore found it unnecessary to pass upon the question of the validity of appellant's patent, and with respect to that expressed no opinion. 1

The opinion in that case contains a reproduction of a drawing illustrating the appellant's patent. Subsequently, in Leishman v. Radio Condenser Co., 9 Cir., 167 F.2d 890, this court affirmed a summary judgment entered in the same district court holding the same patent not infringed, and reaffirmed its decision in the Associated case, supra. The same patent was again fully described in Richards & Conover Co. v. Leishman, 172 F.2d 365, in which the Court of Appeals for the 10th Circuit held the same claims of the patent invalid for want of invention. That opinion also contains reproduction of drawings illustrative of appellant's claims.

Since a reference to the reported decisions cited will disclose the nature of appellant's claims in great detail, we find it unnecessary to repeat the descriptions there given.

In brief it may be said that the claimed invention relates to the problem of providing a simple and easy method of setting the buttons or keys of an automatic tuner so as to bring in, upon pushing any button or key, the desired broadcasting station selected from a broad band of frequencies. As explained by Judge Harrison in his opinion in the Associated case, supra, and by the Court of Appeals for the 10th Circuit in Richards & Conover, supra, some of the earlier devices for adjusting and setting such automatic tuners, for instance the one covered by prior patent to Marschalk, proved unsatisfactory because of difficulty of avoiding 'creeping' during the process of adjusting the device so as to bring in the desired station. This problem of 'creeping' is described at length in the opinion on rehearing of the Richards & Conover case, 172 F.2d at page 369.

Judge Harrison called the same problem one of 'Lay'. Referring to the coaxial relationship between the parts of appellant's structure, (which coaxial feature is the heart of the claimed invention), and which appellant adopted as a means of meeting the 'creeping' problem, Judge Harrison said: 'The coaxial relationship is only important as a means of insuring accuracy at the time of the adjustment of the tappet. It is of importance in that respect for the reason that when the rocker is turned to the proper position for the bringing in of the desired station, the loosened tappet when brought into engagement with the rocker, may be set in proper position by the adjustable means, free from any play. Any play would result in inaccuracies that would destroy the effectiveness of the device. The mechanical problem therefore was to ascertain a means for the accurate and simple adjustment of the tappet.' (36 F.Supp. 808.)

In the tuner proposed by Marschalk, patent No. 2, 072, 897, use was made, as in the case of appellant's combination, of an adjustable tappet moved by a lever and designed to contact and position a rotatable rocker. The creeping difficulty mentioned occurred when the thumbscrew for adjusting the tappet was loosened and the tappet was moved down against the rocker whose position had been fixed by the hand setting of the tuner, the rocker being attached to

Page 524

the revolving shaft used for that purpose. As the tappet was brought down upon the rocker thus positioned, the object was to permit the flat side of the loosened tappet to come against the rocker and assume the precise angle of the rocker. The thumbscrew would then be used to tighten the tappet into that position so that thereafter when the lever was pressed downward, the then rigid tappet would come against the rocker in whatever position it had then assumed, and by pressure, bring it back to the precise position in which it was when the setting occurred.

In actual operation it was found that the Marschalk device was very difficult to set accurately for the reason that when the loosened tappet was brought down upon the positioned rocker and some pressure applied to bring the two snugly together, the rocker had a tendency to 'creep' or permit 'play'. This was particularly true when the rocker was in a position diagonal to the horizontal, and the creeping tendency was for the rocker to move toward a nearly horizontal position. The creeping would destroy the possibility of efficient setting or adjusting for the reason that the radio receiver must be set precisely on the right point on the dial in order to obtain good results.

As has been indicated, appellant claims that he solved this problem of creeping by the device which is illustrated at page 724 of 137 F.2d and at page 367 of 172 F.2d. It will be noted that his rocker consists of a rectangular border only, - No. 48 in the illustration. (The additional rectangle, rocker 54, shown in the illustration, represents an extra feature of his device designed for simultaneous tuning of a television set and the same is not material here.)

As shown by figure 2 in the illustration, the tappet, 61, which moves against the rocker 48, is attached to the lever, 66, by a leg, 68, and pivots upon a pin, 60. It will be noted that when the tappet is thus brought into contact with the rocker in the Leishman device, the tappet and rocker are substantially coaxial, that is to say, that they revolve about the same axis, and about the same center line. Because they are thus coaxial, appellant asserts, the difficulties of setting or adjusting the tappet to the position required, which were experienced in Marschalk, do not occur with the patented device here in question.

Appellant's claim of invention is based upon his application of this coaxial feature to a combination of lever, tappet and rocker.

The trial court held that every element, feature and mode of operation of the tuner of the patent in suit was anticipated by the prior art and in the light of the teachings of prior patents. It also held that the employment of the principle of coaxiality in the device covered by the patent in question, did not constitute invention. The finding of anticipation was predicated upon the court's findings as to the teachings of the Marschalk, the Schaefer and the Cunningham patents. In arriving at its conclusion of want of invention, the court relied heavily upon the decision of Judge Harrison in the Associated case, supra, and of the Court of Appeals of the 10th Circuit in the Richards & Conover case, supra. 2

Page 525

Appellant asserts that the court's findings of anticipation are clearly in error. Thus, he says that the axes in the Schaefer device are far from being coaxial, and that the undisputed testimony shows that creeping was eliminated by Schaefer only by utilizing 18 additional parts, thus constructing a much more complicated mechanism. The Schaefer patent No. 1, 906, 106, utilized the principle of a rack and pinion instead of rocker, but it did utilize a lever upon which was mounted an adjustable tappet which moved against two arms or cross-bars whose relative position was fixed when the tuner was manually set at the desired station. The loosened tappet was then moved by the lever until both ends of the specially shaped tappet came in contact with the two cross-bars at which point it was ready for tightening, thus completing the setting process. To illustrate, Figure 4 of the Schaefer patent is here reproduced.

(Image Omitted)

The rotatable member or shaft which sets the receiver is 9. As it is rotated, the racks 26 and 27, are moved up and down by the rack and pinion mechanism. The two cross-bars, 32 and 34, extend at right angles to the two racks to two other corresponding racks, and both right hand racks and both left hand racks are tied by top cross-bars...

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