Rankin v. King
| Decision Date | 12 November 1959 |
| Docket Number | No. 16386.,16386. |
| Citation | 272 F.2d 254 |
| Parties | Margaret E. RANKIN, O. B. Distributors, and Cedar Falls Drapery Co., Inc., Appellants, v. Edward S. KING and Joan V. King, individually and as co-partners d/b/a King Custom Interiors, Doe One, Doe Two, and American Beauti Pleat, Inc., Appellees. |
| Court | U.S. Court of Appeals — Ninth Circuit |
William Douglas Sellers, Pasadena, Cal., William Van Sciver, Chicago, Ill., for appellants.
Thomas P. Mahoney, Los Angeles, Cal., for appellees.
Before BARNES, HAMLEY and JERTBERG, Circuit Judges.
This is an appeal from a decision granting appellees' motion for summary judgment, holding the patent in suit invalid and dismissing the complaint. The district court had jurisdiction under 28 U.S.C. § 1338, and this Court has jurisdiction on appeal. 28 U.S.C. § 1291.
Appellants charge eight specifications of error which they state may be reduced to two questions:
I. Was there any material issue of fact involved in the motion?
II. Can the court disregard affidavits filed for and against the motion and decide the claims of the patent are invalid over prior art as a matter of law without rendering an opinion and without findings of fact?
Siden Patent No. 2,366,986 was issued January 9, 1945 on an application filed November 9, 1942. The original five claims were rejected and newly presented claims six to nine, inclusive, were allowed as claims one to four. The original claimed invention of "Draperies, Curtains and Similar Hangings in Order to Make Them Hang in as Regular Folds as Possible" was allowed as an improvement under the title: "Drapery, Curtain and Similar Hanging."
Claims two, three and four1 were based on a decorative hanging described in claim one.2 Claim one consisted of a drape supported by a rod, a resilient member of sinuous form secured to the upper edge of the drape, extensible, and in a horizontal plane. Admittedly all except placing the resilient extensible member in a horizontal plane was old in the art. (Ex. H, Certified Copy of File Wrapper.) Claim two added the markings of the points of support on the resilient member for the drape; claim three added openings for and members to support the drape, and claim four added that the unstressed retracted length of the resilient member was substantially less than the width of the extended drape.
In other words, the patent discloses a resilient extensible member (such as wire or a spring), sinuous in form, insertible in a hem formed in the upper edge of a drapery with holes at appropriate distances to permit means for support from a rod causing the drapery to fold in the general pattern of the resilient and extensible supporting member.
Certain patents were cited in the file wrapper (Ex. H) before the court below, namely:
INVENTOR PATENT NUMBER ISSUED
-------- ------------- ------
Schneider No. 1,056,592 1913
Berglund No. 1,746,577 1930
Steinberger No. 2,126,834 1938
Harris No. 2,242,355 1941
The prior art cited in the motion for summary judgment, and not cited in the file wrapper, was:
EXHIBIT NUMBER INVENTOR PATENT NUMBER ISSUED
-------------- -------- ------------- ------
B Dorn 443,188 1890
C Shinn & Fagley 359,896 1887
D J. Shinn 409,760 1889
E Holtzclaw 661,608 1900
F Hawley 641,510 1900
G Kelly 175,544 (British) 1922
The Dorn patent (Ex. B) disclosed the use of a spring, to support and guide draperies, extensible and comprehensible along the length of the rod in zig-zag form rather than sinuous. But the Siden patent refers to "a leaf spring or resilient wire * * * bent * * * in zig-zag or waving line" (p. 1, col. 1, lines 14-17) and "bent in zig-zag, i. e., in gently undulating bends" (p. 1, col. 1, lines 44-47). (Emphasis added.) Thus the form of the extensible resilient member in Siden was equivalent to the member in Dorn, and anticipated by Dorn.
We need not discuss in detail the remaining prior art. None combine as many points of similarity as Dorn, but each has at least one point wherein Siden was anticipated. The similarity between the Siden patent in suit and the previous Dorn patent was particularly relied upon by the trial judge in coming to his decision.
The difference between the two is largely urged by appellants in general language, but specifically it may be summarized as follows:
1. The Dorn patent discloses a specific type of traverse heading, with the spring member a part of the traverse; while Siden has the spring for use with a traverse heading.
2. The Dorn patent discloses a lock or stop for the extensible resilient member, while the Siden patent depends upon inertia or friction to stop or hold the extensible resilient member.
3. The Dorn patent discloses the extensible member attached to the drapery at various points, rather than being placed in the hem thereof with the member supported to the rod at various points.
4. The Dorn patent discloses the extensible member in a vertical plane, the Siden a similar member in a horizontal plane.
As we see it, the only possible substantial difference between Dorn and Siden is that the resilient member of the former is placed in a vertical plane, and in the latter in a horizontal plane. It seems clear that the extensible resilient member of Dorn could be placed in a drapery hem in the same manner and with the same result as the comparable member in Siden. This was attempted to be demonstrated by appellees in Exhibit J, but the trial court refused to consider Exhibit J on this motion when counsel could not agree as to what it disclosed, (Record, p. 140.) We likewise will not consider it.
We agree with the trial court that the Dorn and Siden devices constitute the same means (leaf spring or resilient wire) in the same shape (sinuous or zigzag) adapted to function in the same way (by uniform expansion and contraction of the resilient member supporting draperies at various points of its length at or near the top of said draperies) to accomplish the same result — the uniform and eye-pleasing distribution of the hanging folds of a drapery.
Further, the language of the Siden patent itself admits the identity of means, function, and result of the Dorn patent with one single exception or modification — the use of one member in a horizontal plane as opposed to a vertical. This slight difference in means does not, in our opinion, amount to invention.
Even if it cannot be said there existed "strict anticipation" of the patent in suit, and that the turning of the member from one plane to another involves some novelty and is not precisely similar, a trained mechanic surely would, and an inexperienced layman probably would, solve the problem of putting the member on its side without difficulty.3 We are satisfied the Dorn patent completely anticipates the Siden patent.4 In Siden there was no new or surprising result, Great Atlantic & Pac. Tea Co. v. Supermarket Equipment Corp., 1950, 340 U.S. 147, 71 S.Ct. 127, 95 L.Ed. 162, and no invention.5 Under such circumstances, the motion was properly granted. Cf: Market Street Cable Railway Co. v. Rowley, 1895, 155 U.S. 621 at page 625, 15 S.Ct. 224, at page 226, 39 L.Ed. 284; Park-In Theatres v. Perkins, 9 Cir., 1951, 190 F. 2d 137, 142; Leishman v. Radio Condenser Co., 9 Cir., 1948, 167 F.2d 890, certiorari denied 335 U.S. 891, 69 S.Ct. 246, 93 L.Ed. 429; Stuart Oxygen Co. v. Josephian, 9 Cir., 1947, 162 F.2d 857, 859.
Appellants urge that despite the court's conclusion that Siden was invalid for lack of invention over the prior art, the presence of affidavits disputing the similarity of the devices was sufficient to create an issue of fact.
We note first that the court below was careful to specifically limit itself (in granting the summary judgment) to a consideration of Exhibits A to I, inclusive, and L, alone. (Record, p. 83.) He thus excluded Exhibit J, the model showing the Dorn wire in the hem of a drapery in a horizontal position; Exhibit K, the Dorn extensible resilient wire member; and Exhibit M, the Hancock affidavit. As to Exhibit K, and the undisputed part of Exhibit M, he might well have considered them, but did not, nor will we.
We note second that the court recognized that the burden of establishing that there was no material disputed issue of fact rested on the moving parties, appellees herein (Record, p. 89). This was proper.
The mere presence of affidavits alleging questions of fact existed, or differing in interpretation and reading of the patent and various prior art, whether cited or non-cited, is of no consequence if the court did not consider such disputed facts. Here he specifically declined to consider such affidavits, but...
To continue reading
Request your trial
-
Duplan Corporation v. Deering Milliken, Inc.
...of such cases. Long v. Arkansas Foundry Co., 247 F.2d 366 (8th Cir. 1957) (combination issue under 35 U.S.C. § 112); Rankin v. King, 272 F.2d 254 (9th Cir. 1960) (patent declared invalid for lack of invention over prior art); Chiplets, Inc. v. June Diary Products Co., 89 F.Supp. 814 (D. N.J......
-
Walker v. General Motors Corporation
...328 F.2d 803, 805 (9th Cir. 1964), although the occasion for using this procedure in such cases may be relatively rare. Rankin v. King, 272 F.2d 254, 258 (9th Cir. 1959); Ronel Corp. v. Anchor Lock of Florida, Inc., 325 F.2d 889 (5th Cir. 1963). Summary judgment is appropriate in a patent c......
-
Sugarman v. Forbragd
...as safe, the lack of general recognition as to safety being established by conflicting medical affidavits. See also Rankin v. King, 272 F.2d 254, 258 (C.A. 9, 1959), and Henderson v. A. C. Spark Plug Division, etc., 366 F.2d 389, 393 (C.A. 9, Conclusion For the reasons stated above: 1. Peti......
-
Proler Steel Corporation, Inc. v. Luria Brothers & Co.
...Motors Corp., 9 Cir., 1966, 366 F.2d 389, 393-394; Walker v. General Motors Corp., 9 Cir., 1966, 362 F.2d 56, 59-60; Rankin v. King, 9 Cir., 1959, 272 F.2d 254, 258. And see Super Mold Corp. v. Clapp's Equip. Div. Inc., 9 Cir., 1968, 397 F.2d 932; Fromberg, Inc. v. Gross Mfg. Co., 9 Cir., 1......