Bourns, Inc. v. Dale Electronics Incorporated

• Decision Date: 29 December 1969
• Docket Number: Civ. No. 01432.
• Citation: 308 F. Supp. 501
• Parties: BOURNS, INC., a corporation, and Marlan E. Bourns, an individual, Plaintiffs, v. DALE ELECTRONICS INCORPORATED, a corporation, Defendant.
• Court: U.S. District Court — District of Nebraska

308 F. Supp. 501

BOURNS, INC., a corporation, and Marlan E. Bourns, an individual, Plaintiffs, v. DALE ELECTRONICS INCORPORATED, a corporation, Defendant.

Civ. No. 01432.

United States District Court, D. Nebraska.

December 29, 1969.

Mellin, Hanscom & Hursh Oscar A. Mellin, and Carlisle M. Moore, San Francisco, Cal., Fitzgerald, Brown, Leahy, McGill & Strom Lyle Strom, Omaha, Neb., for plaintiffs.

Zarley, McKee & Thomte Donald Zarley, and Dennis Thomte, Des Moines, Iowa, James J. Holmberg, Columbus, Neb., White, Lipp, Simon & Powers John J. Powers, Omaha, Neb., for defendant.

MEMORANDUM

RICHARD E. ROBINSON, Chief Judge.

This matter was tried to the Court without a jury. The Court has been presented with testimony, documentary evidence, depositions and a series of briefs and is now ready to announce a decision, making the following findings of fact and conclusions of law.

Jurisdiction is vested in this Court by virtue of 28 U.S.C.A. § 1338(a), plaintiff, Bourns, Inc., and Mr. Bourns individually being citizens of the State of California and defendant, Dale Electronics, Inc., being a citizen and having an established place of business in the State of Nebraska. This is an action for infringement of plaintiffs' patents numbered 2,777,926, 2,935,716, 2,953,763, 3,161,849 and 2,898,569. Defendant asserts by way of defense that the patents are invalid and non-infringed. It also defends by attempts to establish misuse, concealment during the formulation of military specifications and laches.

Certain motions have been made since trial and should be disposed of prior to stating findings of fact and conclusions of law. Defendant filed a request for oral argument for the purpose of allowing the parties an opportunity to summarize their respective positions. Because this case has been thoroughly briefed by each side the Court saw no need for further argument and orally so notified the parties. For purposes of the record that motion is now overruled. Plaintiff has also filed two motions to reopen trial and to offer additional evidence. Plaintiff's first motion relates to a pamphlet which plaintiff claims would state that teflon would be a material suited for use as a slider. Defendant states that should such case be reopened it would then have to attack the publication foundationally and then possibly present a countervailing opinion. The second motion relates to the admission into evidence of a letter which would be offered to show proof of the concept that compliance with military specifications does not require infringement. Defendant again states a wish to attack foundationally as well as further reasons for cross-examination. Because, as will later appear in this opinion, the Court does not believe the material presented to be of such a controlling nature as would probably induce a different conclusion the motions will be overruled. Neither motion and the evidence which may be admitted would effect the decision as written and therefore no good purpose would be served by prolonging a matter in which a decision is long over-due.

It has also come to the Court's attention that the entry into evidence of plaintiff's exhibit 105 was not allowed after certain deletions were made. No objections were received after the deletions. For the record that exhibit should have been received and the record should now so indicate.

Patent No. 2,777,926.

Plaintiff relies upon claims 1, 2, 11, 14, 15, 16 and 20 of the '926 patent. Defendant's primary thrust centers upon the validity of the '926 patent. Defendant's contention, among others, is that this patent is obvious. Non-obviousness is an element necessary for patentability under 35 U.S.C.A. § 103. The Court recognizes the presumption of validity as a result of allowance of the claims by the patent office and that the burden rests heavily upon the defendant to over-come that presumption in order to obtain a favorable decision. Superior Concrete Accessories, Inc. v. Richmond Screw Anchor Co., 246 F.Supp. 104 W.D.Mo. 1965 aff'd 369 F.2d 353 8th Cir. 1966. However, this presumption will not stand in the face of compelling facts. "In such a case the court is not obliged to yield its judgment to a presumption which merely arises from the patent itself." American Infra-Red Radiant Co. v. Lambert Industries, Inc., 360 F.2d 977 8th Cir. 1966. In determining the validity of the patent this Court must ascertain the essence and scope of the patent as stated in the above-mentioned claims. Once having determined its essence it is then necessary to establish, among other elements, whether the patent, as defined, is obvious using the guidelines laid down by the Supreme Court. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 1966 and restated by the Eighth Circuit in National Connector Corp. v. Malco Mfg. Co., 392 F.2d 766 8th Cir. 1968.

The basic instrument involved in this litigation is a leadscrew-adjusted potentiometer LSAP which has for its general purpose adjustments to tune a circuit to a desired result. The first question is then, what is the essence of the patent. A patent is limited to the invention described in the claims approved read in light of the specifications. Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 37 S.Ct. 416, 61 L.Ed. 871 1917. The Eighth Circuit has further stated that:

"A patent is not a mathematical measurement. It is a conception reached by consideration of the combined effect of the state of the art, the contributions as revealed in the language of the patent to one skilled in the art, and any limitations imposed and accepted during the progress of the application through the Patent Office." General Motors Corp. v. Kesling, 164 F.2d 824, 832 8th Cir. 1947.

It is helpful in order to fully understand the scope of the patent as well as its validity to state the factors which distinguish each claim from the others. Claims 1, 2, 14 and 15 all contain basic elements of a potentiometer. They all contain a housing member having two opposite, substantially flat sides, a resistance element, conductor claim 1 only, a slider, a screw to move the slider with spring contact members on the slider and a means for making an external connection Claims 1 and 2 through a side or end of the housing or an opening extending transversely through the housing to receive a mounting post.

Claim 11 is similar to the above claims except that there is no housing stated and there is added "a pair of upstanding portions at opposite ends thereof." It also contains a "means engaging said screw means to prevent longitudinal movement thereof while permitting rotation thereof"; also a "means restraining the slider against rotation."

Claim 20 has the basic elements found in 1, 2, 14, and 15 but adds to that, without mention of mounting holes, that the resistor is capable of being "adapted to be assembled in juxtaposition with other like resistors." This description presumably explains the size, configuration and ability of the devices to be stacked or mounted easily either alongside or on top of each other.

Claim 16, while also similar, includes language that the cover cooperated with the housing to form a conduit in one side of the housing.

Throughout all except claims 16 and 20 reference is made, in addition to or in conjunction with what has been already stated, to the mounting holes or openings which generally extend transversely through said housing perpendicular to the flat sides and is used to receive a mounting post in order to permit close and rapid assembly. Claims 1 and 2 are somewhat different in language in that there are holes both perpendicular and parallel to the flat side portions still having the same purpose of close and rapid assembly.

Commencing with the history and progress of this application through the patent office as finally embodied in claims 1, 2, 11, 14, 15, 16 and 20, it provides some insight into the scope of the patent. Bourns initially submitted eighteen 18 claims all of which were rejected. The Patent Examiner in so ruling relied primarily upon and cited patent number 2,357,433 the Side Patent stating that the Bourns '926 patent was unpatentable over the prior art. Of the original eighteen 18 claims Bourns amended two originally claims 2 and 3 and now claims 1 and 2. These claims were amended to include mounting holes which were placed on adjoining sides to permit close and rapid assembly with other variable resistors. Also additional claim 22 present claim 11 was submitted without any provision for mounting holes. Claims 2 and 3 were accepted becoming claims 1 and 2 and original claim 22 was amended to include the mounting holes. Also, new claims 29, 30, 31 and 38 which subsequently became 14, 15, 16 and 20 respectively were also submitted. Claims 29 and 30 included mounting holes but were different to the extent that not only was there an opening but that opening extended completely through the housing enabling the receipt of a mounting post. Original claims 22, 29 and 30 were accepted and became 11, 14 and 15. Claims 31 and 38 were rejected. Claim 31 now claim 16 was then amended to include a housing and its cover which formed a conduit on one side of the housing. After the amendment that claim was also accepted. Claim 38 was also amended. It read closely upon the Anderson and Dietrich patents see file wrapper of '926 patent and after minor wording changes was also accepted. It originally contained functional language pertaining to the mounting holes.

From a reading of the allowed claims and the history of the patent as it passed through the patent office it seems apparent that the mounting holes are the elements excepting claim 16 of the patent which the Patent Examiner believed to be the essential feature which made the patent acceptable. The patent office cited the Side Patent as containing all of the elements of the Bourns '926 patent until the amendment to include the mounting holes or a rearrangement...