EW Bliss Co. v. Cold Metal Process Co.

• Decision Date: 27 October 1942
• Docket Number: No. 5402.,5402.
• Citation: 47 F. Supp. 897
• Parties: E. W. BLISS CO. v. COLD METAL PROCESS CO.
• Court: U.S. District Court — Northern District of Ohio

47 F. Supp. 897

E. W. BLISS CO. v. COLD METAL PROCESS CO.

No. 5402.

District Court, N. D. Ohio, E. D.

September 2, 1942.

Supplemental Opinion October 27, 1942.

B. M. Kent (of Kwis, Hudson & Kent), of Cleveland, Ohio, and Fraser, Myers & Manley, of New York City, for plaintiff.

Baker, Hostetler & Patterson and Howard Burns, all of Cleveland, Ohio, and Stebbins, Blenko & Parmelee, Walter J. Blenko, and William H. Webb, all of Pittsburgh, Pa., for defendant.

WILKIN, District Judge.

This case was heard on plaintiff's motion for summary judgment. The reason assigned for the motion was that defendant's patent 1,779,195 (referred to in the briefs and in this memorandum as '195) is invalid for two reasons: (1) That certain essential features of the division patent were not disclosed in the original application and that therefore as matter of law the patent is not entitled to the benefit of the filing date of the original application and is for that reason without validity as against admitted prior uses, (2) that the patent was invalidated by the filing of the disclaimer because the disclaimer was itself improper and made void the claims to which it applied.

The defendant opposed the motion on the following grounds: That there are genuine issues as to material facts which exclude the case from the operation of Rule 56, Federal Rules of Civil Procedure, 28 U.S. C.A. following section 723c; that plaintiff's principal contention has been twice litigated and determined; that the question of identity of disclosure in the original application and the division patent requires extrinsic evidence to explain the terms of the art and to apply the description to the subject matter; that the disclaimer adds no new elements to the claims enumerated but merely limits them in a way that is lawful and proper; that the motion is dilatory and should be disregarded.

As to the first ground of motion, it seems to this court, in view of the condition of the pleadings and the affidavits of Pulliam and Hunt and the arguments of counsel, that there is an issue of fact which precludes summary judgment. The court finds here very much the same situation that existed in the case of Steele v. Wean, D.C., 37 F.Supp. 839. Plaintiff contends that in three particulars patent '195 contains improvements "none of which is disclosed in the 1923 application". Defendant denies these contentions, and each side offers affidavits to support its views. It seems to be the accepted rule that claims covering important inventions will not be struck down by summary judgment where the parties have not agreed on the facts or have not both moved for summary judgment. Refractolite Corp. v. Prismo Holding Corp., D.C., 25 F.Supp. 965; Van Wormer v. Champion Paper & Fibre Co., D.C., 28 F.Supp. 813; Meikle v. Timken-Detroit Axle Co., D.C., 44 F.Supp. 460.

Furthermore, although this court cannot in the circumstances say that the issue is res judicata, the fact that the patent was approved by a court of competent jurisdiction after full trial (Cold Metal Process Co. v. United Engineering & Foundry Co., D.C., 3 F.Supp. 120) would make it almost presumptuous for this court to declare the patent invalid upon nothing more than a comparison of documents which had been before the other court.

As to the second ground of motion, it seems to the court that the question of the effect of the disclaimer is properly raised. It does not appear that any other court has determined that specific question; but even if it had been an issue in the prior cases, there would still be a serious question whether or not that would preclude the plaintiff from raising the question here. Cold Metal Process Co. v. American Sheet & Tin Plate Co. et al., D.C., 22 F.Supp. 75, is the only case in which there is any showing of participation by the plaintiff, and the decree in that case, after having been reversed in the Court of Appeals (Cold Metal Process Co. v. Carnegie-Illinois Steel Corp. et al, 3 Cir., 108 F.2d 322) was finally vacated.

But, regardless of the effect of the former decisions, this court feels constrained to find that the disclaimer was proper and that it did not invalidate the claims of the patent to which it referred. It seems that this issue is controlled by the case of Cleveland Automatic Machine Co. v. National Acme Co., 6 Cir., 52 F.2d 769. The cases of Hazeltine Corp. v. Emerson Television-Radio, Inc., et al., 2 Cir., 129 F.2d 580, decided July 29, 1942, and Milcor Steel Co. v. George A. Fuller Co., 316 U.S. 143, 62 S.Ct. 969, 86 L.Ed. 1332, are different, because the disclaimers changed the character of the claimed inventions. It was held in both these cases that the...