Adams v. Columbus Manufacturing Company

• Decision Date: 30 December 1958
• Docket Number: Civ. A. No. 754.
• Citation: 169 F. Supp. 346
• Parties: Simpson J. ADAMS, Individually; Simpson J. Adams and Myrtle R. Adams, Trustees for; Montez Adams Walker, Ruby Adams Deal, and Simpson J. Adams; and Adams, Inc., Plaintiffs, v. COLUMBUS MANUFACTURING COMPANY, West Point Manufacturing Company, and Dixie Mills, Incorporated, Defendants.
• Court: U.S. District Court — Middle District of Georgia

169 F. Supp. 346

Simpson J. ADAMS, Individually; Simpson J. Adams and Myrtle R. Adams, Trustees for; Montez Adams Walker, Ruby Adams Deal, and Simpson J. Adams; and Adams, Inc., Plaintiffs, v. COLUMBUS MANUFACTURING COMPANY, West Point Manufacturing Company, and Dixie Mills, Incorporated, Defendants.

Civ. A. No. 754.

United States District Court M. D. Georgia, Columbus Division.

December 30, 1958.

Foley, Chappell, Kelly & Champion, Columbus, Ga., Love, Thornton & Arnold, Ralph Bailey, Jr., Greenville, S. C., for plaintiffs.

Hatcher, Smith, Stubbs & Rothschild, Columbus, Ga., Eaton, Bell, Hunt & Seltzer, Charlotte, N. C., Spalding, Sibley, Troutman, Meadow & Smith, Atlanta, Ga., for defendants.

BOOTLE, District Judge.

In this action which alleges patent infringement the defendants have moved for a summary judgment in their favor on the grounds that the patent in suit and all its claims are invalid and void and have not been infringed by the defendants "as a matter of law" and that there is no genuine issue as to any material fact. In their written brief supporting this motion the defendants define the issue raised by the motion as follows: "Whether the claims of the patent in suit are void as a matter of law (1) for want of novelty in that each of the claims recite the old and exhausted combination shown in Patent No. 2,129,639 (now expired) and/or (2) for want of invention as claiming more than the patentee invented." (Emphasis supplied). More specifically, the defendants urge that under the expired patent the patentee plaintiff enjoyed a 17 year patent monopoly on the combination of a bar, a pair of electric conductors, a plurality of electric switches and a drop wire; that toward the latter part of this monopoly he improved the switch and re-patented the same combination with this improved switch as an element thereof; that the other old parts in the combination perform no new function in the combination when the improved switch is present; that the improved switch, if patentable at all, should have been patented as such and not in combination with the other old elements, and that the patent in suit is void in claiming more than the patentee invented.

The defendants urge further that the two patents involved are simple and need no expert testimony to explain them and that this court can hold as a matter of law that the claims of the patent in suit are invalid and void and fully anticipated by the prior patent. For the alleged invalidity of the patent in suit the defendants rely heavily on the case of Lincoln Engineering Co. v. Stewart-Warner Corp., 1938, 303 U.S. 545, 58 S. Ct. 662, 82 L.Ed. 1008, and for the availability of summary judgment in this case they rely upon the cases of Vermont Structural Slate Co. v. Tatko Bros. Slate Co., 2 Cir., 1956, 233 F.2d 9, 10; Delco Chemicals v. Cee-Bee Chemical Co., D.C.S.D.Cal.1957, 157 F. Supp. 583, and Allen v. Radio Corporation of America, D.C.D.Del.1942, 47 F. Supp. 244.

In opposition to this motion the plaintiffs urge that in order to resolve the defendants' contentions the court must make a comparison between the combinations of structural elements defined by the claims of the two patents and that in making such comparison the court must decide questions of fact, that the question of anticipation involves a factual determination and that this is a case bristling with fact controversy...