Leeds & Northrup Co. v. Doble Engineering Co.

• Decision Date: 23 July 1941
• Docket Number: No. 4518.,4518.
• Citation: 40 F. Supp. 373
• Parties: LEEDS & NORTHRUP CO. v. DOBLE ENGINEERING CO.
• Court: U.S. District Court — District of Massachusetts

40 F. Supp. 373

LEEDS & NORTHRUP CO. v. DOBLE ENGINEERING CO.

No. 4518.

District Court, D. Massachusetts.

July 23, 1941.

George K. Woodworth, of Boston, Mass., for plaintiff.

Harrison F. Lyman and Fish, Richardson & Neave, all of Boston, Mass., for defendant.

BREWSTER, District Judge.

This action is for a declaratory judgment. The issues are (1) whether Claim 15 of Doble Patent, U. S. No. 1,945,263, is valid and, if valid, (2) whether plaintiff infringes. A master found the claim valid but that plaintiff did not infringe. The defendant excepted to the master's ruling respecting infringement. The matter came before the court on defendant's exception and, after consideration, an opinion was rendered in which the master's findings of fact were adopted and his rulings affirmed. Leeds & Northrup Company v. Doble Engineering Company, D.C., 37 F.Supp. 113, 117.

At the request of the defendant a rehearing was granted. This memorandum, in order to avoid unnecessary repetition, should be read in connection with the opinion referred to above.

I acknowledge that in certain particulars my earlier opinion needs corrections, or modification. I there stated that the master had found "that the outer shield was the novel feature" of the claim. It would have been more accurate if I had said that he found it to be a vital feature. I also said that I found nothing in the record to compel the conclusion that the true novelty or gist of the invention resided in the "internal charging current shielding system." The defendant may be justified in the criticism that I failed to attach due significance to that feature of his invention. However, it may be noted that according to the file wrapper in evidence, Doble did not belittle the shielding means against external influences as a novel element of his invention.

Again, in my opinion I stated that the rule that a combination may be claimed though its utility depended on other apparatus did not apply "where the situation requires that another element be included by necessary implication in order to save the patentability of the claim." The defendant assails this statement as applied to the facts of the case at bar. As a general proposition I make no apologies for it, but there may be implicit in it a ruling that the validity of Claim 15 required the inclusion of the outer shield. If so, it is possible that the statement is not entirely consistent with the master's report.

As appears in the former opinion, the master stated that if the claim was given the scope for which the defendant contended respecting the means for eliminating outside interference it "would in effect give the Defendant a patent for a result, so far as the limitation `in the field' is concerned, which is not permissible." This is settled law. Benoit v. Wadley Co., 7 Cir., 54 F.2d 1041, 1044. Later in his report the master points out that the limitations imposed by these words were to be regarded in the consideration of the question of infringement rather than of validity. In dealing with the question of "file wrapper estoppel" the master observed, "He (patentee) cannot escape the effect of such added limitation when seeking to enforce the claim against infringers but acceptance of a narrower claim admits nothing with respect to validity."

I am disposed to accept the master's views but since the only controversy arose over the question of infringement, the limitation was properly regarded, and any misconception of the master's rulings in that regard cannot affect the ultimate conclusion.

There is no occasion to pursue further defendant's criticism of the opinion on file. The master's report has been adopted without modification. It constitutes the record for the case. It is inconceivable that any appellate court would permit any errors, misinterpretations or omissions to include material findings in a written opinion of the trial court to work to the prejudice of an appellant if such error or omission were called to its attention.

With all errors corrected and omissions supplied, I am still of the opinion that the exception should be overruled.

The defendant...