Stearns v. Tinker & Rasor

• Decision Date: 25 February 1958
• Docket Number: No. 15111.,15111.
• Parties: Dick E. STEARNS and The D. E. Stearns Company, a Partnership Composed of Dick E. Stearns and Ellen Belson Stearns, Appellants, v. TINKER & RASOR, a Corporation, John P. Rasor and Leo H. Tinker, Appellees. TINKER & RASOR, a Corporation, John P. Rasor and Leo H. Tinker, Appellants, v. Dick E. STEARNS and The D. E. Stearns Company, a Partnership Composed of Dick E. Stearns and Ellen Belson Stearns, Appellees.
• Court: U.S. Court of Appeals — Ninth Circuit

252 F.2d 589 (1957)

Dick E. STEARNS and The D. E. Stearns Company, a Partnership Composed of Dick E. Stearns and Ellen Belson Stearns, Appellants, v. TINKER & RASOR, a Corporation, John P. Rasor and Leo H. Tinker, Appellees.

TINKER & RASOR, a Corporation, John P. Rasor and Leo H. Tinker, Appellants, v. Dick E. STEARNS and The D. E. Stearns Company, a Partnership Composed of Dick E. Stearns and Ellen Belson Stearns, Appellees.

No. 15111.

United States Court of Appeals Ninth Circuit.

December 27, 1957.

Rehearing Denied February 25, 1958.

COPYRIGHT MATERIAL OMITTED

H. Calvin White, William P. Green, Los Angeles, Cal., Browning, Simms & Hyer, Ralph R. Browning, James B. Simms, Houston, Tex., for appellants.

Edward B. Gregg, Henry G. Hardy, San Francisco, Cal., John H. Saunders, Los Angeles, Cal., for appellee.

Before STEPHENS, Chief Judge, BARNES, Circuit Judge, and CHASE A. CLARK, District Judge.

STEPHENS, Chief Judge.

This cause is here on appeal for the second time. The original action was brought by Dick E. Stearns and The D. E. Stearns Company (hereinafter referred to as Stearns) against Tinker & Rasor, a corporation, and John P. Rasor and Leo H. Tinker (hereinafter referred to as Tinker & Rasor), seeking a judgment for patent infringement with respect to Claims 1 and 7 of United States Letters Patent No. 2,332,182. Tinker & Rasor answered, asserting defenses of invalidity, non-infringement and misuse. Tinker & Rasor also filed a counterclaim in which they sought declaratory relief of non-infringement and invalidity of the patent claims and a judgment against Stearns for unfair competition in asserting its patent and for misusing its patent.

Following trial, the District Court dismissed the complaint on the ground that Claims 1 and 7 of the Stearns patent were invalid as not constituting invention over the prior art. No findings were made as to other issues raised by the pleadings.¹ Upon appeal this Court reversed, holding that the Stearns patent is not invalid for want of invention and remanded the cause for further proceedings. Stearns v. Tinker & Rasor, 9 Cir., 1955, 220 F.2d 49, certiorari denied 350 U.S. 830, 76 S.Ct. 62, 100 L.Ed. 741.

Pursuant to this Court's mandate, oral argument was had in the District Court, and judgment was thereupon entered against Stearns, dismissing the complaint and sustaining Tinker & Rasor's counterclaim. It was also held that the manufacture by individual defendants, Leo Tinker and John Rasor, of four detectors, prior to incorporation, was an infringement of Stearns' patent, had the claims of the patent been valid. The judgment was subsequently modified to allow Stearns costs upon the first appeal pursuant to our mandate and dismissing the counterclaim as no damage was shown to Tinker & Rasor. Both parties appeal from that judgment.

The Appeal

The Stearns patent is for an "Insulation Testing Device," commonly called a "holiday detector," which is used to detect flaws or "holidays" in insulating coatings, such as coal tar or asphalt enamel, applied to steel pipelines prior to their placement in the ground. The holiday detector uses the insulating quality of the coating to inspect the pipe electrically for leaks. The detector generates a high voltage with a means for impressing this voltage across the coating between the pipeline itself, which serves as one electrode, and a traveling or exploring electrode. The exploring electrode is a part of the instrument and is moved along the length of the pipeline. If a "holiday" or flaw is encountered, current flows through the "holiday" or flaw between the pipe and exploring electrode, causing the operation of a signaling system of the instrument, thereby indicating the location of the flaw. For further explanation as to the operation and needs of such a detector, see our earlier opinion, Stearns v. Tinker & Rasor, supra 220 F.2d 53.

Claim 1 of the Stearns Patent reads as follows:

"1. An electrical exploring device for detecting defects in an insulating coating on an elongated member which comprises an exploring electrode in the form of a coiled spring adapted to extend about such member and having its ends secured together to completely embrace such member, and means rotatably engaging and forming a movable electrical contact with said spring at a position remote from the surface of said member for connecting said spring to a high voltage testing circuit and for rolling said spring along such elongated member." (Emphasis supplied.)

The dispute as to Claim 1 centers around the meaning of the phrase "and means rotatably engaging." Tinker & Rasor argue that this phrase limits the claim to rollers or wheels, and since their detector uses a sleeve bearing, they are not infringing the Stearns patent. The District Court held that Tinker & Rasor's detector is not embraced by the Stearns patent because:

(a) Pushers without wheels or rollers are disclaimed on the face of the Stearns patent;

(b) The Stearns patent on its face contemplates no alternative to a wheeled pusher;

(c) By amending Claim 1 to recite a wheeled pusher, Stearns disclaimed and abandoned all other structures as set forth in Claim 1.

We initially note that this Court previously held that the invention of the Stearns patent is that

"the spring electrode for the first time in its use in holiday detectors is rolled, instead of being dragged. In the Stearns detector, the pusher rotably engages and forms a movable electrical contact with the spring electrode so as to roll it and connect it electrically to the high voltage test circuit; and movement of the carriage longitudinally upon the pipe imparts a rolling movement to the spring electrode. And this different coaction of the elements produces a new and useful result, viz.: The detection of holidays in a more facile and efficient way. * * *" 220 F.2d 49.

We now advert to the reasons given by the District Court.

File Wrapper Estoppel

In D & H Electric Company v. M. Stephens Mfg., Inc., 9 Cir., 1956, 233 F.2d 879, 882, 883, this Court recently said:

"Claims of a patent must be interpreted with reference to the history contained on the file wrapper, which is nothing more than a written record of the preliminary negotiations between the applicant and the Patent Office for a patent monopoly contract.

* * * * * *

"Having asserted the novelty of the right angle principle in order to secure the patent, appellant cannot now expand his coverage to include other claims which were denied him in the proceedings before the Patent Office. This is simply the exercise of the doctrine of `file wrapper estoppel\' — the gravamen of which is that an applicant who acquiesces in the rejection of his claim, and accordingly modifies it to secure its allowance, will not subsequently be allowed to expand his claim by interpretation to include the principles originally rejected or their equivalents." See also Exhibit Supply Co. v. Ace Patents Corp., 315 U. S. 126, 136, 62 S.Ct. 513, 86 L.Ed. 736, 744; Holliday v. Long Manufacturing Co., D.C., 146 F.Supp. 527; cf. Hunt Tool Company v. Lawrence, 5 Cir., 1957, 242 F.2d 347.

In the instant case the original Stearn's application tendered for the patent in suit contained fifteen claims. All but Claims 5, 6, 7, 14 and 15 were rejected. Claim 3 of the original application subsequently became Claim 1 of the amended application, original Claims 1 and 2 having been cancelled. Claim 3 as originally worded stated:

"An electrical exploring device for detecting defects in an insulating coating on an elongated member which comprises an exploring electrode in the form of a coiled spring adapted to extend about such member and having its ends secured together to completely embrace such member, and means forming a movable electrical contact with said spring at a position remote from the surface of said member for connecting said spring to a high voltage testing circuit."

The Examiner rejected this claim stating:

"Claim 3 is rejected as unpatentable over Clarvoe in view of Dye and Bensett or Lenz. It does not amount to invention to substitute the contact means of Dye and Bensett in the apparatus of Clarvoe in view of the use of a coiled spring contact in Dye.

"Claims 1-4 are rejected as indefinite and incomplete. The statement that the rollers are `adapted to engage\' the spring in claim 4 and similar statements in claims 1-3 do not set forth a definite operating relationship between the parts." (Emphasis supplied.)

Reapplication was made by Stearns. Claim 3 became Claim 1. Old Claim 3 was amended to add, after the words "and means," the words "rotatably engaging and;" and after the word "circuit," the words "and for rolling said spring along such elongated member." Significantly, the attorney for Stearns, in his letter of resubmission, stated:

"Claims 1 and 2 have been cancelled. Claim 3 has been amended to specify that the means forming the movable electrical contact with the spring rotatably engages the spring and rolls the spring along the elongated member which is being tested. It is pointed out that in neither of the patents to Lenz, Dye or Bensett is the coiled member capable of rotation along the member which is to be tested and in no case is it mounted so that it could be rotated or rolled along such member. In each case the means which engages the coil member would hold it against any substantial rotation. It is, therefore, respectfully submitted that claim 3 should be allowed over the patent to Clarvoe taken with the three patents above referred to.

"It is also believed that the amendment to Claim 3 which specifies that the means forming a movable electrical contact with the spring rotatably engages the spring obviates the Examiner\'s criticism of this claim as indefinite and incomplete, and that the amendment to claim 4 obviates the same criticism as to that claim." (Emphasis supplied.)

We hold the finding of the District Court that file wrapper estoppel in itself limited the Stearns...