Faulkner v. Baldwin Piano & Organ Co.

• Decision Date: 25 April 1977
• Docket Number: Nos. 76-1588,s. 76-1588
• Citation: 195 U.S.P.Q. 410,561 F.2d 677
• Parties: Alfred H. FAULKNER, Plaintiff-Appellant, v. BALDWIN PIANO & ORGAN CO. et al., Defendants-Appellees. through 76-1596. . Heard
• Court: U.S. Court of Appeals — Seventh Circuit

Page 677

561 F.2d 677

195 U.S.P.Q. 410

Alfred H. FAULKNER, Plaintiff-Appellant, v. BALDWIN PIANO & ORGAN CO. et al., Defendants-Appellees.

Nos. 76-1588 through 76-1596.

United States Court of Appeals Seventh Circuit.

Heard April 25, 1977.

Decided Aug. 15, 1977.

As Modified on Denial of Rehearing and Rehearing En Banc

Oct. 11, 1977.

Norman Lettvin, Chicago, Ill., for Faulkner.

Ronald L. Engel, James Van Santen, Richard R. Trexler, Theodore W. Anderson, Chicago, Ill., for Baldwin Piano & Organ Co. et al.

Before CUMMINGS and PELL, Circuit Judges, and GORDON, District Judge. ^*

CUMMINGS, Circuit Judge.

Plaintiff is a patentee and the owner of U.S. Patent No. 2,811,069 for an electrical musical instrument. The patent issued on October 29, 1957, from an application filed on March 3, 1951. It expired on October 29, 1974. Plaintiff prepared the patent application himself and prosecuted it on the merits pro se. ¹

In 1973, plaintiff filed five suits against defendants claiming that their electronic organs infringed Claims 1, 12 and 13 of his patent. In each complaint, plaintiff demanded a jury trial in accordance with Rule 38(b) of the Federal Rules of Civil Procedure and limited his claim under 35 U.S.C. § 284 for money damages only. In the complaints filed January 17, 1973, against Baldwin, Chicago Musical Instrument Co. and Wurlitzer, Faulkner asserted he first learned of these defendants' infringement in April 1972. In the complaints filed March 29, 1973, against Hammond and L & G Enterprises, Inc. plaintiff asserted he first learned of their infringement in 1973. All five complaints limited the claim for recovery under 35 U.S.C. § 286 to infringing acts occurring within the period of "six years prior to the filing of the complaint" and to any infringing acts occurring subsequent to the filing of the complaint. The cases were consolidated for trial and appeal.

The defendants, except L & G Enterprises, Inc., first asserted the affirmative defenses of laches and estoppel, and the district court held preliminary hearings limited to those subjects on June 26-27, 1973. After June 27, 1973, discovery proceeded on all issues. Judge Will held a 35-day bench trial on the issues of laches and estoppel beginning on June 6, 1974, which continued intermittently until November 6, 1974. On January 14, 1975, the same defendants filed motions for summary judgment on the ground that the stipulation of uncontested facts and the evidence already before the court established that the Faulkner patent is invalid. On April 16, 1976, the district court entered 219 findings of fact and 16 conclusions of law, together with a comprehensive opinion holding that plaintiff's complaint must be dismissed with prejudice and with costs to defendants. These rulings are reported in 189 USPQ 695.

In its conclusions of law, the district court held that summary judgment was appropriate on certain validity issues as to Claims 1, 12 and 13 of the Faulkner patent "since the prior art, history of the prosecution of the application leading to the issuance of the patent and the patent itself are all documents capable of interpretation upon examination and all other facts relevant to validity are undisputed" (189 USPQ at 716). The court refused to rule on various grounds of invalidity tendered by defendants where material issues of fact existed (189 USPQ at 717-719; 726-727).

Claim 1 of the patent was held invalid under the "late claiming" doctrine of Muncie Gear Works, Inc. v. Outboard Marine & Mfg. Co., 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171, and under 35 U.S.C. § 132 ² if read to encompass keying of square waves by all forms of non-linear conducting devices. However, Claim 1 was held valid when properly read with its scope limited to the keying of the square waves by the use of neon or glow tubes. Since none of defendants' accused organs utilized neon or glow tubes to key square or rectangular tone waves, none was held to infringe plaintiff's Claim 1. Similar rulings were made with respect to Claims 12 and 13. If read to be broader than Claim 1 as to the type of keyer concerned, Claims 12 and 13 were held invalid under 35 U.S.C. § 121 and 37 C.F.R. § 1.141 forbidding the claiming of two or more inventions in one application.

Although Judge Will realized that his resolution of the summary judgment motion rendered the issues of laches and estoppel moot, he resolved this question as well as "an exercise of sound judicial administration." 189 USPQ at 727. Accordingly, the court also decided that the doctrine of laches foreclosed plaintiff from asserting any claims for alleged infringement prior to May 2, 1972, when notices of infringement were first served on the defendants. Finally, the court concluded that the doctrine of estoppel foreclosed plaintiff from asserting any claims against defendants for infringement of his patent. We affirm on the basis of Muncie Gear Works, Inc., supra, and 35 U.S.C. § 121 as implemented by 37 C.F.R. § 1.141. Therefore, we do not reach the other questions decided by Judge Will. Because summary judgment was proper on this record, there was no need for the district court to hold a jury trial as to the validity of plaintiff's patent. Research Corp. v. NASCO Industries, Inc., 501 F.2d 358 (7th Cir. 1974); Townsend Co. v. M.S.L. Industries, 359 F.2d 814 (7th Cir. 1966).

In Muncie Gear Works, Inc., supra, a unanimous Supreme Court invalidated a patent on a water propulsion device. There the patentee filed a patent application on August 25, 1926, which did not suggest in any way the combination later asserted as his invention. The defendants relied on the predecessor to 35 U.S.C. § 102(b), which provided that a person shall not be entitled to the issuance of a patent if the invention was "in public use or on sale in this country for more than two years prior to his application". 315 U.S. at 766, 62 S.Ct. at 869. After noting that all of the patentee's amendments filed as of December 8, 1928, like the original application, wholly failed to disclose mention of the invention later asserted under March 30, 1929, amendments, the Court found that there was a public use or sale of the device which the claims of the patent were alleged to cover by the licensee of the patent in early 1926 and by a competitor in early 1927. Consequently, the Court invalidated the claims of the patent. Judge Will summarized the Muncie Gear doctrine as follows:

"The Court concluded that, since a new application would have been statutorily barred if made more than two years after the first public use or sale of a device embodying the alleged invention, an amendment seeking to achieve indirectly what could not have been achieved directly, was improper and the patent invalid" (189 USPQ at 721).

Because the former two-year bar of 35 U.S.C. § 102(b) was reduced to one year in 1939 (53 Stat. 1212), the late claiming doctrine of Muncie Gear was of course correspondingly modified. See 315 U.S. at 766 n. 8, 62 S.Ct. 865.

The Faulkner patent generally concerns electronic organs which use direct current (DC) keying instead of alternating current (AC) keying. DC keying permits a smooth "attack" or "decay" of the tone signal so that the musical tone effect of "percussion" or "sustain" can be achieved as contrasted to the instantaneous sound and resultant undesirable "click" produced by AC keying. Claim 2 of Faulkner's original application, which became Claim 1 of the Faulkner patent as issued covered "a tone signal source, a translating device, and a (neon) glow tube attenuator connected between said source and said device" in a musical instrument. ³ Nowhere in the original application is there any reference to anything other than neon glow tubes as keying devices. Throughout the entire six years' prosecution of the application, only neon glow tubes were disclosed as the electronic keying devices in the patent specifications. Faulkner's prototype, built from 1951 to 1956, utilized only neon glow tubes as the keying elements and it did not embody Claims 12 and 13 which Faulkner considered to be auxiliary. It was scrapped by plaintiff a month before filing the first three of these lawsuits. ⁴

In May 1952, plaintiff filed an amendment which again described the keying device as a "glow tube attenuator." However, in July 1954, he filed a second amendment which changed the description of the keying device from "glow tube attenuator" to "gaseous tube." This amendment was rejected by the Patent Examiner in September 1956 because "(t)here would be no invention in merely substituting a gaseous tube * * * for the diode 2 of George" patent No. 2,483,823. In an affidavit of February 22, 1975, and on earlier occasions, Faulkner agreed with the Examiner that the gaseous tube and the diode utilized as the keyer in the George patent were equivalent (Plaintiff's App. 254).

In December 1956, plaintiff filed a third amendment amending then Claim 2 to its final form, substituting, for the first time, "non-linear conducting device" for the previously described neon glow or gaseous tubes as the specified keying device. He contends that he intended both neon glow tubes and diodes to be covered by this generic substitute phrase. In general, Claim 1 in its final form relates to a circuit for DC keying tone signals to achieve percussion or sustain without frequency distortion.

In July 1955, defendant Lowrey Organ Company, subsequently purchased by defendant Chicago Musical Instrument Co., exhibited and played its Model SS organ with DC Keying at the National Association of Music Manufacturers (NAMM) in Chicago and again at its 1956 show in New York. This utilized a square wave tone generator keyed by a vacuum tube diode and was the first publicly exhibited electric organ to achieve desired attack, sustain and decay characteristics (artificial reverberation of musical notes to simulate pipe organ and musical instrument sounds). The Model SS organ was developed by Walter...