Bobertz v. General Motors Corporation

• Decision Date: 20 August 1954
• Docket Number: Civ. A. No. 9399.
• Citation: 126 F. Supp. 780
• Parties: Gustav H. BOBERTZ, Jr., Plaintiff, v. GENERAL MOTORS CORPORATION, Defendant.
• Court: U.S. District Court — Western District of Michigan

126 F. Supp. 780

Gustav H. BOBERTZ, Jr., Plaintiff, v. GENERAL MOTORS CORPORATION, Defendant.

Civ. A. No. 9399.

United States District Court E. D. Michigan, S. D.

August 20, 1954.

Gregory S. Dolgorukov, Detroit, Mich., for plaintiff.

Arthur Raisch, Detroit, Mich., for defendant.

KOSCINSKI, District Judge.

Plaintiff sues for infringement of Patent No. 1,911,600 relating to improvement in automobile hoods. Defendant denies infringement and attacks validity of the patent for lack of novelty and patentable invention. Issue was joined, pre-trial hearing had and a pre-trial order entered defining the issues, following which exhaustive discovery proceedings ensued by both parties.

Defendant filed motion for summary judgment under Rule 56, claiming absence of any genuine issue of material fact. Oral argument was had and all exhibits were made available to the court, including defendant's accused device. Briefs were filed fully covering the issues involved.

Ordinarily, courts are reluctant to decide important issues by summary judgment because of the lack of a record adequate to explain the issues of fact and law. Parke, Davis & Co. v. American Cyanamid Co., 6 Cir., 207 F.2d 571, citing Estepp v. Norfolk & W. Ry. Co., 6 Cir., 192 F.2d 889. In the latter, a personal injury case, and in Begnaud v. White, 6 Cir., 170 F.2d 323, a contract case, the court ruled that where a genuine issue of material fact exists summary judgment should not be granted, but in the Parke, Davis & Co. v. American Cyanamid Co. case, supra, a patent case, the court said, 207 F.2d at page 573, "but here the issues are clarified by extensive interrogatories filed by both parties and answered fully." Both parties in this case resorted to extensive discovery proceedings, filing of affidavits and exhibits, and making admissions. The court also had the benefit of the Patent Office file wrapper showing the history of the prosecution of this patent. The thoroughness of the pre-trial activities of both parties resulted in the elimination of any genuine issue of material fact in dispute. Under such circumstances it has been held that where no factual issues are present and where the patents and products involved are sufficiently simple to make expert testimony unnecessary, disposition under Rule 56, 28 U.S.C.A., is proper. Bridgeport Brass Co. v. Bostwick Laboratories, 2 Cir., 181 F.2d 315, 316, 319; Steigleder v. Eberhard Faber Pencil Co., 1 Cir., 176 F.2d 604, certiorari denied 338 U.S. 893, 70 S.Ct. 244, 94 L.Ed. 548; Vulcan Corp. v. International Shoe Machine Corp., D.C.D.Mass., 68 F.Supp. 990, affirmed, 1 Cir., 158 F.2d 520, certiorari denied, 330 U.S. 825, 67 S.Ct. 868, 91 L.Ed. 1275; Alex Lee Wallau, Inc., v. J. W. Landenberger & Co., D.C., 121 F. Supp. 555, 556. Defendant's accused hood is a partially transparent counterpart of the regular steel hood used in all of defendant's 1949 Oldsmobile "Rocket Engine" automobiles. Both hoods were available to the court for examination and comparison with plaintiff's hood of the claimed invention, which in Figure 2 of the patent drawings follows closely the automobile hood structure of defendant's 1932 Chevrolet automobile.

In Steigleder v. Eberhard Faber Pencil Co. case, supra 176 F.2d 604 the court in approving disposition of certain patent cases under Rule 56 said: "Where it is apparent that there is no genuine issue of fact bearing on infringement, and the structure and mode of operation of the accused device are such that they may be readily comprehended by the court, and compared with the invention described and claimed in the patent, without the need of technical explanation by the testimony of expert witnesses, then the court, if satisfied that there is no infringement, should give summary judgment for the defendant, instead of subjecting the parties to the expense of a trial." To the same effect Smith v. General Foundry Mach. Co., 4 Cir., 174 F.2d 147, certiorari denied 338 U.S. 869, 70 S.Ct. 144, 94 L.Ed. 533.

The five combination claims of the patent in suit are directed to an automobile hood made of transparent material, consisting of two vertical members, and either one or two horizontal members with a plurality of longitudinally extending transparent reinforcing means connecting the adjoining edges of said members to form a unitary structure therefrom, and securing means adapted to coact with a hold-down latch on the vehicle body to removably secure the hood to the vehicle body. The specifications state the object of the patent to be an invention to provide an automobile hood formed of transparent material, which permits full visibility of an engine of a motor vehicle at all times. Claim 1 is representative.¹ This transparent automobile hood would only temporarily replace the ordinary hood and was not intended for regular use in an automobile. The novelty of this invention is stated in the specifications to reside in the transparency of the top and sides of the automobile hood, for display or study purposes, enabling the observer full visibility of the engine.

The specifications also state that the automobile hood of the invention may be formed of a singe sheet of transparent material, or a plurality of independent sheets of such material, and while it is also stated in the specifications that the applicants for the patent do not desire to be limited to any type of hood fastening means, nor to a particular shape or configuration of such a hood, but desire to avail themselves of all changes in the scope of the appended claims, it is clear upon examination of the file wrapper history of the prosecution of this patent, and the language of the claims of the patent, that the claims finally granted are expressly limited to an automobile hood of several pieces made of any transparent material and joined together by transparent reinforcing means to form a unitary structure.

The original application filed in the Patent Office had seven claims, all rejected by the Patent Office. A total of nine new claims were filed during subsequent proceedings in the Patent Office, of which five were finally allowed. These rejected claims included language relating to "transparent means for enclosing the portion of the vehicle between the radiator and the cowl"; a "transparent automobile hood formed of transparent material"; and later, "of sheet celluloid". The rejected claims presented nothing patentable over Rumpler (German) No. 379,379 (1923) which, in claims 1 and 4, describe a motor vehicle hood constructed from transparent celluloid. No invention is claimed on the latching means, and the substitution of the temporary hood in place of the conventional hood in an automobile is taught by Martin No. 1,382,959 (1921).

As pointed out by the Patent Office, the combination of a cowl, radiator shell, a hood, and the latching means for the hood, is an old one, as disclosed in Martin. No invention would be involved in substituting sheet celluloid for the wire mesh covering in Martin, in view of the transparent hood shown in Rumpler, the moulded celluloid used in Rumpler being equivalent to sheet celluloid, and the use, broadly, of transparent reinforcing means is not a patentable distinction, since an ordinary prudent mechanic would naturally locate the reinforcing means to conform with the design of the vehicle body. The reinforcing rods in Martin are adapted to conform with the design of the vehicle body, as stated by the Patent Office, and afford no basis for a patentable invention.

The patent was finally allowed only when the claims were presented in the specific language suggested by the Examiner, limiting the grant to the vertical and horizontal transparent members and reinforcing means disposed to conform the body design of the motor vehicle upon which the hood is placed, with latching means on the vehicle body.

The claims of the patent do not disclose the nature of the transparent material of which the hood is made, and although it is stated in the specifications that the hood of the invention may be formed by a single sheet of transparent material or a plurality of independent sheets of such material, the Patent Office repeatedly and finally rejected claims for a one-piece transparent hood, in view of Rumpler whose patent disclosed an automobile hood of transparent celluloid.

In 1949 defendant caused to be made and distributed to its Oldsmobile dealers a quantity of "plexiglas" transparent automobile hoods made of sheet plastic material, to be used in displaying and demonstrating its Oldsmobile "Rocket Engine" and other parts of an automobile usually located under the hood, without the necessity of raising the hood for each individual display or demonstration. This hood was made of a single sheet of material variously referred to as plexiglas, celluloid, and plastic. The transparent portion in the center of the hood covers about two-thirds of its surface.

The claims of plaintiff's patent are specific and limited to a transparent hood consisting of separate vertical and horizontal parts joined together by reinforcing means, in order to form a unitary structure. Defendant's accused hood is made in one piece, with six ordinary screw-fastenings openings for attachment to the body and chassis of the car, without separate vertical members and without any reinforcing means connecting together the several pieces of transparent material comprising the structure of the patent.

During the prosecution of his application in the Patent Office plaintiff cancelled claims sufficiently broad in scope to cover the one-piece hood which was made of a single sheet of transparent plastic and took the claims of the patent which are specific to the plural-piece hood as illustrated in Figures 1 and 2 of the patent, with the reinforcing ribs connecting the individual members. By cancelling his original claims plaintiff created an express limitation relating to the inventive step, and cannot now be permitted to depart...