Allen-Bradley Company v. Air Reduction Company
| Decision Date | 25 August 1967 |
| Docket Number | Civ. A. No. 36-66. |
| Citation | 273 F. Supp. 930 |
| Parties | ALLEN-BRADLEY COMPANY, a Wisconsin corporation, Plaintiff, v. AIR REDUCTION COMPANY, Inc., a New York corporation, Defendant. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
COPYRIGHT MATERIAL OMITTED
John G. Gent, Erie, Pa., Louis Quarles, Arthur H. Seidel, Arnold J. Ericsen, Milwaukee, Wis., for plaintiff.
B. R. Coppolo, St. Mary's, Pa., W. Brown Morton, Jr., Martin J. Brown, Washington, D. C., H. Hume Mathews, Murray Hill, N. J., John McLaughlin, Erie, Pa., for defendant.
Plaintiff is the owner of U. S. Patent No. 3,050,186 issued August 21, 1962, by assignment from the inventor Niles. Its complaint alleges that defendant is infringing Claims 1 and 2 of said patent by making, selling and using packaging embodying the patent invention. Plaintiff prays for an accounting, damages, and an injunction against further infringement.
The patent relates to a means of conveniently packaging small uniform thin cylindrical articles by mounting them transversely on a thin pliant strip with an adhesive coating, the strip and the articles adhered thereto being wound about a central spool in helical turns inside the end plates of the spool.
The plaintiff's business, as related to the patent concerned in this suit, is the manufacture and sale of electrical resistors. These are small-diameter elongated cylinders, from whose longitudinal ends extend thin deformable wires which comprise the major portion of their length. Plaintiff's problem was how to package compactly and inexpensively a substantial number of these so that they can be transported and handled without damage and be available for use by feeding into automatic assembly machinery.
Plaintiff's solution, as embodies in Claim 1 of this patent, was to attach the central body of the transistor transversely to a thin flexible band coated with a pressure sensitive adhesive material having cohesion superior to its adhesion (scotch tape). A large number are thus attached in a regularly spaced order and the band is wound around the central spool of a reel between its end plates with the attached resistors and the adhesive side facing inward so that each winding adheres to the prior winding and so that the tape can be unwound and the resistors removed from the adhesive material without contamination by it (releasably secured). The result achieved by plaintiff is stability and fixation of the resistors so that the soft, thin, deformable end wires do not become bent or entangled, and that the combination, the bundle of lead wires, is sufficiently strong to support end plates which form a package for shipment and handling.
Defendant's answer admits the issuance of the patent but denies that the patent was duly and legally issued to plaintiff, denies infringement, and affirmatively pleads that the said patent is invalid and void as not meeting the conditions for patentability of 35 U.S.C. § 102(a), (b), (f) and (g), and 103. Defendant further asserts a counterclaim for declaratory judgment of invalidity, noninfringement and unenforceability of said patent on the same grounds. Plaintiff replies to the counterclaim that it presents no cause of action for declaratory judgment under the Declaratory Judgment Act, 28 U.S.C. § 2201, because plaintiff's claim relates to the same issues upon which defendant requests declaratory judgment.
Defendant has moved for Summary Judgment, asking for dismissal of plaintiff's action on the grounds of invalidity of the patent. Defendant alleges that printed publications available more than a year prior to the filing of said patent disclose the inventions claimed therein and that as a matter of law the said patent is invalid under the provisions of 35 U.S.C. §§ 102(b), 103, 282 and 285.
In support of its motion for summary judgment the defendant has filed the following evidentiary materials:
A. U. S. Patent 3,050,186, issued to Plaintiff August 21, 1962, as assignee of the inventor Niles, the patent in question.
B. The certified file wrapper and contents of Patent 3,050,186.
C. The prior art considered by the Patent Office in the proceedings on Patent 3,050,186 consisting of copies of the following patents:
Patent No. Inventor Issue Date
1. 1,263,318 Fischer April 16, 1918
2. 2,135,134 Ehlers Nov. 1, 1938
3. 2,165,539 Dahlgren July 11, 1939
4. 2,251,609 Freeburg Aug. 5, 1941
5. 2,417,497 Hulslander Mar. 18, 1947
6. 2,454,821 McKee Nov. 20, 1948
7. 2,607,356 Lewis Aug. 19, 1952
D. The prior art found by Defendant and not considered by the Patent Office in the proceedings on Patent 3,050,186 consisting of copies of the following patents:
1. 111,051 Fowler Jan. 17, 1871
2. 212,642 Allen Feb. 25, 1879
3. 1,589,387 Hartford June 22, 1926
4. 2,014,726 Flood Sept. 17, 1935
5. 2,280,665 Schmitter Apr. 21, 1942
E. A specimen of Defendant's packaging alleged to infringe Plaintiff's Patent No. 3,050,186.1
For the purpose of Defendant's Motion, defendant admits that it is infringing Plaintiff's patent and admits that Plaintiff can show commercial success.
Plaintiff has filed Cross-Motions for Summary Judgment asking for judgment of validity of the patent and judgment that Defendant is infringing Claims 1 and 2 of the patent. In support of its motion, Plaintiff filed the following evidentiary materials:
1. Affidavit of Harold H. Zabel, an engineer employed in the Radio and Electronics Division of plaintiff corporation, making an analysis of the prior art and plaintiff's patent.
2. Affidavit of Arnold J. Ericsen, a patent attorney employed by plaintiff corporation, making an analysis of defendant's packaging and its infringement on the claims of plaintiff's patent.
3. The following patents not previously made of record in this case relating to the packaging of fixed resistors:
Patent No. Inventor Issue Date
(a) 2,214,230 Freeburg Sept. 10, 1940
(b) 2,558,920 Baggs July 3, 1951
4. A sample of plaintiff's packaging embodying the patent at issue in this case.
In the briefs presented and at the extensive oral argument there seems to be a remarkable unanimity of opinion between opposing counsel that the matter was susceptible of summary judgment with respect to certain aspects of the case. Defendant contends that the matter is fully susceptible to summary judgment on the question of prior publication under § 102 or obviousness under § 103, in which case the infringement question becomes moot. Plaintiff agrees that the question of invalidity on these grounds can be determined as a matter of law with the evidentiary material before the court over which there is no substantial dispute. For the purpose of its motion on prior publication or obviousness, defendant admits that plaintiff's packaging has had commercial success and admits that for the purpose of this motion its own package infringes Claims 1 and 2 of plaintiff's patent. Defendant makes no argument with the evidence produced in the Ericsen affidavit, and specifically admits that a determination of "claim applicability" may be made on the present record, reserving nevertheless all its defenses on the validity of plaintiff's patent, the final question of infringement being postponed until there has been a full determination of validity.
Plaintiff admits that because defendant has raised other defenses to the validity of the patent, aside from those raised in the motion, its Cross-Motion for Summary Judgment for validity cannot be determined on this record.
In summary, therefore, we have a judicial admission by defendant that Claims 1 and 2 of plaintiff's patent do "read" on defendant's package, and that the claims of plaintiff's patent are applicable to defendant's package. Rule 56(d) provides for such a determination, disposing of this issue, final judgment of infringement to abide the determination of validity after trial of that issue, if not disposed of on the present motion.
We consider the question of determination of a patent question appropriate for disposition by summary judgment under Federal Rule of Civil Procedure 56 in the same manner as that rule is applied to other cases, that is, when there is no genuine issue as to any material fact. Montmarquet v. Johnson & Johnson, 82 F.Supp. 469 D.N.J.1942, aff'd per curiam 179 F.2d 240 3rd Cir., 1950, cert. den. 339 U.S. 979, 70 S.Ct. 1025, 94 L.Ed. 1384 1950.
In the recent case of The Borden Company v. Clearfield Cheese Co. Inc., 369 F.2d 96, 3rd Cir., 1966, the Court of Appeals reaffirmed this rule, although reversing summary judgment because of the combination of circumstances obtaining in that case. The following guidelines were stated:
. 369 F.2d 101.
The Court has had the advantage of extensive evidentiary material, affidavits of experts as in Montmarquet, supra, copies of the patents embodying the prior art, both as found...
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