Marvin Glass & Associates v. Sears, Roebuck & Company

• Court: U.S. District Court — Southern District of Texas
• Writing for the Court: SINGLETON
• Citation: Marvin Glass & Associates v. Sears, Roebuck & Company, 318 F. Supp. 1089 (S.D. Tex. 1970)
• Decision Date: 30 July 1970
• Docket Number: Civ. A. No. 68-H-516.
• Parties: MARVIN GLASS & ASSOCIATES v. SEARS, ROEBUCK & COMPANY.

318 F. Supp. 1089

MARVIN GLASS & ASSOCIATES v. SEARS, ROEBUCK & COMPANY.

Civ. A. No. 68-H-516.

United States District Court, S. D. Texas, Houston Division.

July 30, 1970.

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Tom Arnold, Arnold, Roylance, Kruger & Durkee, Houston, Tex., for plaintiff.

Joseph Jaworski, Bracewell & Patterson, Houston, Tex., for defendant.

SINGLETON, District Judge.

This is a patent case. United States Letters Patent No. 3,086,297 was issued for a "talking book." Plaintiff, Marvin Glass & Associates, an Illinois partnership, is the owner of the patent. In August of 1967, plaintiff purchased the patent in suit from the inventor, Mrs. Louise A. Kay, for $17,500.00. Mattel, Inc., manufactures a "talking book" under the name "See 'N Say" talking story books. Mattel, Inc., a California corporation, was originally named as a defendant in this suit, but the complaint was dismissed as to Mattel for lack of venue. The remaining defendant, Sears, Roebuck & Company is a New York corporation licensed to do business in this District, is actually doing business in this District, and has a regular and established place of business within this District. Sears has sold the Mattel device within the District. This Court has venue under 28 U.S.C. § 1400 (1962).

Plaintiff brings this suit alleging that the Mattel device sold by Sears infringes claims one, two, three, and nine of its patent. As is often the case in patent suits, defendant raises a multitude of defensive issues. Defendant claims that the "invention" was anticipated by a prior patent, that it appeared in a prior printed publication, that it was in prior public use or sale by the inventor, that the inventor abandoned the invention, and that the inventor did not invent the subject matter of the patent in suit. Further, defendant claims that the patent is invalid for the "obviousness" of the difference between its subject matter and the prior art. In addition, defendant attacks the patented device as being inoperative; lacking in any commercialization; and, having an improper supplemental oath executed by the inventor. Finally, defendant denies that its device infringes the claims of the patent in suit.

Essentially, a "talking book" is a combination of a book and a sound-reproducing mechanism with some means of correlating the visual intelligence written on the pages of the book with the audio intelligence recorded on a sound track. Both the patented device and the accused device embody this basic concept.

Factual Background. Sometime in 1953 Mrs. Louise A. Kay invented the subject matter of the patent in suit. Mrs. Kay worked as a bookkeeper and was required to leave her child in the care of others. She sought to invent a talking book to both educate and entertain her child. Mrs. Kay, by her own admission, was no engineering genius. She could only implement her idea for a talking book through a process of trial and error. She purchased several electric motors, batteries, and an erector set. She constructed a turntable out of a piece of wood. She made her own recording of various nursery rhymes. After many unsuccessful attempts, she developed a device which would correlate the recorded message with the visual message and which would stop the turntable at the end of each message.

Mrs. Kay was never completely satisfied with the finished device. She felt that the recording she had made herself was not of the best quality. She occasionally would put the batteries in backward and the turntable would rotate in the wrong direction. However, all these minor difficulties aside, there is no doubt that the device worked.

Mrs. Kay saw the potential of her "invention" and sought out a firm of patent attorneys to aid her in preparing a patent application. She took her device to her attorney, Mr. Byrne. She demonstrated it for him and it operated successfully. Mr. Byrne gave the model to his draftsman. The drawings and specifications which were later placed in the patent application were made at this time from Mrs. Kay's model.

On November 17, 1953, Mrs. Kay's patent application was filed and the procedure leading to the issuance of Letters Patent was commenced. However, all was not clear sailing for Mrs. Kay. On April 19, 1955 her attorneys withdrew from prosecution of the original application, because a check from Mrs. Kay to her attorneys was returned for insufficient funds. On being advised by her attorneys that they were withdrawing from the case, Mrs. Kay called them and was given the impression that they would take care of her application.

Mrs. Kay's attorneys did not file an answer to an office action dated December 7, 1956, and since the inventor, Mrs. Kay, did not know an answer was due, the application became abandoned as of June 7, 1957, without Mrs. Kay's knowledge.

Sometime between the filing of the first application and the filing of the second application, Mrs. Kay tried to license her invention to the Radio Corporation of America and the Harris Group in an attempt to have these organizations promote her invention. Later, in the summer of 1961, Mrs. Kay approached Viewlex, Inc., in an attempt to license her invention under a patent which she thought all along that she had. Mrs. Kay was informed by the patent attorney for Viewlex that she did not have a patent and that her original application had lapsed. Not until that time was Mrs. Kay aware that she did not have a patent on her talking book. On August 21, 1961, a new application was filed as a substitute for the original application, which new application issued as the patent in suit on April 23, 1963. Mrs. Kay's negotiations with Viewlex resulted in an option agreement dated November 7, 1961, and a license agreement dated September 28, 1962. Mrs. Kay's patent application remained secret in the Patent Office. Mattel's talking book did not come on the market until five years after Mrs. Kay's patent issued.

On or about May 1, 1967, plaintiff, Marvin Glass & Associates, began the development of a talking book, which included a book having a plurality of pages, with a record-type sound reproducing apparatus designed to reproduce the intelligence on the pages of the book. In August of 1967 in the course of the state of the art search of educational devices in the Patent Office, plaintiff became aware of the patent in suit and after a study thereof, plaintiff purchased the patent from Mrs. Kay for $17,500.00.

The Patented Device. In order to facilitate subsequent discussion, it is appropriate at this point to set forth, in layman's terms, what this Court understands to be the device depicted in the drawings and specifications of the Kay patent and the mode of operation of that device.

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The Kay device is housed in what can best be described as a suitcase. Inside, there is a holder in which a book is placed. Along the right-hand edge of the right-hand page of the book there is an index, namely, an arrow. On the first pair of pages, the arrow is near the top of the right-hand page along the right edge. With each succeeding pair of pages the arrow is placed somewhat lower along the edge of the right-hand page.

Adjacent to the right-hand edge of the open book but somewhat below it, there is a slot in the side of the casing on which the book rests. This slot runs the full length of the right edge of the open book. The bottom of the slot is notched at regular intervals. Protruding from the slot is a lever with an arrow imprinted on it. By matching the arrow on the lever with the arrow on the page of the book, the appropriate audio message is selected. This lever in the Kay device is the single control whereby the mechanism housed beneath the book is operated. This lever both selects the message and turns on the power to operate the device.

Inside of the casing is a turntable which is connected to an electric motor by means of a pulley. On the turntable is a standard disc record with a sound track recorded in a single groove, which starts at the outer periphery of the record and proceeds spirally toward the center of the record.

The control lever is connected to a pickup needle so that when the lever is shifted the pick-up needle is moved laterally between the outside edge and the center of the record. Messages are recorded at spaced intervals on the record. The messages are separated by blank portions of the sound track. Thus, by positioning the control lever in a particular notch, the pickup needle is positioned above a specific message.

At the opposite end of the arm to which the pick-up needle is affixed is another needle. This needle makes contact with an exposed copper wire, thus completing the electrical circuit between the batteries and the electric motor which powers the turntable. The aforementioned copper wire is insulated at spaced intervals. Thus, when the pickup needle traverses a particular message on the record, the opposite end of the arm to which the needle is affixed traverses a certain length of the copper wire and reaches an insulated portion thereof. Thus, at the end of a message the circuit is broken and the turntable comes to a halt. The pick-up needle remains resting in the groove of the record at that point.

To hear another message, all one must do is lift the control lever out of the notch in which it is resting. By lifting the control lever the pick-up needle is raised from the groove of the record and is returned by a "lost motion" connection to its starting position. The same message may be replayed simply by placing the lever into the same notch or a new message selected by turning the page, matching the arrows, and allowing the lever to drop into the corresponding notch. The Accused Device. The Mattel device is basically a book with the sound-reproducing mechanism housed in a casing beneath the book. A circular hole is cut through all the pages of the book. On each right-hand page of the book an arrow is placed on the edge of the circle made...