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 |
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.
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 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:
(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:
We now advert to the reasons given by the District Court.
In D & H Electric Company v. M. Stephens Mfg., Inc., 9 Cir., 1956, 233 F.2d 879, 882, 883, this Court recently said:
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:
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:
We hold the finding of the District Court that file wrapper estoppel in itself limited the Stearns...
To continue reading
Request your trial-
Autogiro Company of America v. United States
...383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966); Fauber v. United States, 37 F.Supp. 415, 93 Ct.Cl. 11 (1941); Stearns v. Tinker & Rasor, 252 F.2d 589 (9th Cir. 1957); Carl Braun, Inc. v. Kendall-Lamar Corp., 116 F.2d 663 (2d Cir. 1941); Hutzler Bros. Co. v. Sales Affiliates, Inc., supra; ......
-
Skil Corp. v. Lucerne Products, Inc.
...Hensley Equipment Company v. Esco Corporation, 383 F.2d 252 (5th Cir. 1967), modified, 386 F.2d 442 (5th Cir. 1967); Stearns v. Tinker & Rasor, 252 F.2d 589 (9th Cir. 1958); nonetheless, a common example of patent misuse is noted in Morton Salt Co. v. Suppiger, 314 U.S. 488, 491, 62 S.Ct. 4......
-
Valmont Industries, Inc. v. Yuma Manufacturing Company
...will have the effect of enlarging his monopoly beyond that covered by the patent." 61 F.Supp. at 812. See also, Stearns v. Tinker & Rasor, 252 F.2d 589, 600, 604 (9th Cir. 1957); McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381, 404-410 (10th Cir. 1965); McCullough Tool Co. v. Well S......
-
Saf-Gard Products, Inc. v. Service Parts, Inc.
...Tank & Mfg. Co., Inc. v. Linde Air Products Co., 339 U.S. 605, 607, 70 S.Ct. 854, 855, 94 L.Ed. 1097 (1950); Stearns v. Tinker & Rasor, 252 F.2d 589, 599 (9th Cir. 1957). Litigated Claim 3 has been infringed. The phraseology used in the Pre-Trial Order to describe defendants' accused device......
-
The Rosetta Stone for the doctrine of means-plus-function patent claims.
...Ethicon Endo-Surgery, Inc. v. United States Surgical Corp., 93 F.3d 1572 (Fed. Cir. 1996). (239.) See Steams v. Tinker & Rasor Corp., 252 F.2d 589, 598 (9th Cir. 1957) (finding infringement of a means-plus-function claim because the structure corresponding with the claimed function was ......
-
Specific Practices That Have Been Challenged as Misuse
...patent empowers the owner to exact royalties as high as he can negotiate with the leverage of that monopoly.”); Stearns v. Tinker & Rasor, 252 F.2d 589, 604 (9th Cir. Older cases suggest that excessive royalties could constitute misuse under specific circumstances. For example, the Seventh ......