214 F.Supp. 704 (W.D.Tenn. 1963), Civ. 3791, Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co.

Docket Nº:Civ. 3791
Citation:214 F.Supp. 704
Party Name:Monroe Auto Equipment Co. v. Heckethorn Mfg. & Supply Co.
Case Date:February 11, 1963
Court:United States District Courts, 6th Circuit, Western District of Tennessee

Page 704

214 F.Supp. 704 (W.D.Tenn. 1963)

137 U.S.P.Q. 148




Civ. No. 3791.

United States District Court, W.D. Tennessee, Western Division.

Feb. 11, 1963

Page 705

Don K. Harness, Detroit, Mich., Walter Armstrong, Jr., Memphis, Tenn., for plaintiff.

Robert F. Conrad, Washington, D.C., M. Watkins Ewell, Sr., Dyersburg, Tenn., for defendant.

BOYD, Chief Judge.

After trial to this court without the intervention of a jury, plaintiff's demand for a jury having been stricken on motion of the defendant, the court found that the plaintiff could not prevail in its action for infringement of claims under two patents dealing with shock absorbers, nor could it prevail in its claim of unfair competition. The court's disposition of this case is reported in 204 F.Supp. at page 249.

This court found that the claims in suit were invalid as lacking in invention and having been anticipated by an earlier device. These were Claims 2 and 3 of Patent No. 2,896,938, dealing with a shock absorber with rubber sleeve; and Claim 14 of Patent No. 2,912,235, dealing with the positioning of the shock absorbers in a 'sea leg' mounting. Further, this court found that these claims were invalid because the particulars of the claims were not disclosed until added by amendment more than a year after the device embodying these particulars was placed on public sale by the plaintiff.

Again, the controversy is before this court, the Court of Appeals upon plaintiff's motion having vacated the aforesaid judgment rendered here remanding the cause for reconsideration in the light of Dairy Queen, Inc. v. Wood, 369 U.S. 469, 82 S.Ct. 864, 8 L.Ed.2d 44; and Shubin v. United States District Court, 369 U.S. 660, 83 S.Ct. 1035, 8 L.Ed.2d 273. This court's action in striking the plaintiff's demand for jury trial at the first hearing is that which must be reconsidered.

The Supreme Court delivered an opinion in Dairy Queen, supra, but disposed of the Shubin case per curiam, reversing therein the Court of Appeals vacating judgment and remanding that cause for consideration in the light of Dairy Queen.

In the Dairy Queen case owners of a trademark contracted with the petitioner, Dairy Queen, Inc., for the exclusive use of the trademark 'Dairy Queen' in certain areas. The owners claimed that Dairy Queen had breached its contractual obligation to pay for the use of the trademark and instituted suit in the District Court, seeking (a) temporary injunction and permanent injunction to restrain use of the trademark; (b) an accounting to determine the exact amount owing to the owners and judgment for such amount; and (c) an injunction for prevention of Dairy Queen's collection of money from its stores pending the accounting. Dairy Queen in its answer raised the following defenses: (a) denial of its breach of contract, claiming a subsequent oral modification thereof; (b) laches and estoppel; and (c) alleged violations of anti-trust laws relating to the owners' dealing with the trademark. In its answer Dairy Queen demanded a jury trial. This demand was denied by the District Court. Dairy Queen then sought in the Court of Appeals to compel the District Court to vacate its order denying a jury trial. Mandamus was refused, whereupon the Supreme Court granted certiorari.

The Supreme...

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