DU BOIS PLASTIC PROD. v. UNITED STATES SAFETY SERV. CO., 10574.
| Decision Date | 21 June 1958 |
| Docket Number | No. 10574.,10574. |
| Citation | 168 F. Supp. 944 |
| Parties | DU BOIS PLASTIC PRODUCTS, Inc., a New York Corporation, Virginia I. DuBois, Rita C. Sterne, Eileen Silbert, Florence E. Taylor and Lauriene T. Holzworth, Plaintiffs and Counterclaim Defendants, v. UNITED STATES SAFETY SERVICE CO., a Missouri Corporation, Defendant and Counterclaimant. |
| Court | U.S. District Court — Western District of Missouri |
Thomas E. Scofield, Kansas City, Mo., for plaintiffs and counterclaim defendants.
C. Earl Hovey, Kansas City, Mo., for defendant and counterclaimant.
This is an action for alleged infringement of specified claims of three (3) letters patent, numbered 2,368,750, issued February 6, 1945; 2,406,998, issued September 3, 1946; and 2,422,534, issued June 17, 1947, relating to "Eye Shields". Plaintiffs Virginia I. DuBois, Rita C. Sterne, Eileen Silbert, Florence E. Taylor and Lauriene T. Holzworth are the joint owners of all three patents. Plaintiff DuBois Plastic Products, Inc. is their exclusive licensee.
Defendant, although denying infringement, admits that since a date subsequent to the issuance of the aforementioned letters patent it has been, and presently is, making and selling, within the jurisdiction of this Court and elsewhere, goggles, commercially known as "Airflow Saf-I-Flex Series 29," of the kind plaintiffs allege to be infringements of the claims of their patents; that it is actively engaged in obtaining customers and developing markets for present and future sales of such goggles and that it intends to continue to do so. As affirmative defenses, defendant asserts that each of the claims of the letters patent placed in suit is invalid because of prior art and use by others. By way of counterclaim, defendant seeks declaratory judgment under Section 2201, Title 28 U.S. C.A., on the ground that none of the patent claims in suit can be read upon or cover its "Airflow Saf-I-Flex Series 29" goggles.
Defendant has filed motion for summary judgment in respect to the issues raised by its counterclaim. The sole issue presented thereby is whether as a matter of law each of the claims in suit can be read upon or made to cover defendant's goggles. If that proposition is negatively determined as to any or all claims so put in suit, then infringement could not here be present.
"When it appears, in a patent infringement suit, that extrinsic evidence is not needed to explain the terms of the art involved and the court is able, from mere comparison, to comprehend what the invention described in a patent is, and, from a mere comparison of the structures, to determine whether one device infringes on another, the question of infringement or no infringement is one of law." Young v. Ralston-Purina Co., 8 Cir., 1937, 88 F.2d 97, 101.
Copies of the letters patent and the file wrapper pertinent thereto are before the Court. The devices patented thereby are of simple and obvious construction. They relate to the lens and rim portion of eye shields. Primarily, the specification and claims thereof are concerned with the particular details of construction and interlocking fastening structure for securing a rim member to a lens member. Neither the language used in describing the patents, the claims thereof, nor the drawings appear complex or technical in nature. Specimens of the accused goggles are likewise before the Court. The characteristics thereof, their mode of construction and means of fastening the rim member to the lens thereof are obvious from a mere examination. It is, therefore, possible to understand the nature of the patented inventions here to be considered and determine whether or not all the elements and means set forth in each of the patented claims, or mechanical equivalents thereof, may be read upon the alleged infringing devices, or whether the elements of the latter are produced by different modes of operation, without extrinsic evidence being adduced regarding such matters. Under these circumstances, summary judgment appears to be a proper remedy "upon all or any part" of the claims in suit. Rule 56(a), 28 U.S.C.A.; Steigleder v. Eberhard Faber Pencil Co., D.C.Mass.1948, 81 F.Supp. 143, affirmed 1 Cir., 1949, 176 F.2d 604. Summary judgment may, under proper circumstances, be entered in a patent case on issue of want of invention, novelty, and infringement, even if the patent is valid, if "reasonable men would find no difficulty in distinguishing between the involved" devices and the accused one. Rothe v. Ford Motor Co., 102 U.S.App.D.C. 331, 253 F.2d 353.
Following service on it in this action, defendant filed a motion for a more definite statement, seeking, among other things, "a statement and designation of the patent claim or claims of each of the patents in suit with respect to which plaintiffs charge infringement in the complaint." Without awaiting formal ruling by the Court upon said motion, plaintiffs filed a more definite statement of complaint, designating the claims relied upon in this action to be: Claims 1, 2, 3, 4 and 5 of Patent No. 2,368,750; Claims 1, 2, 4, 5, 7, 8 and 9 of Patent No. 2,406,998; and Claims 1, 2, 3 and 6 of Patent No. 2,422,534. Plaintiffs have now filed an "amendment to the more definite statement of complaint" and seek the Court's approval of the withdrawal from this action of Claims 8 and 9 of Patent No. 2,406,998; and Claims 1, 2 and 6 of Patent No. 2,422,534. Defendant-counterclaimant opposes approval of the withdrawal by plaintiffs of any of the claims previously designated and alleged as being infringed by it on the ground that it is entitled to the protection of a judgment of non-infringement with respect to said claims. Notwithstanding defendant's opposition, we believe that leave should be granted plaintiffs to file withdrawal from this action of the above-referred-to claims, for manifestly plaintiffs' disclaimer of non-infringement thereof no longer presents any justiciable issue between the parties in respect thereto. In light of such written disclaimer, there is no reason for conditioning leave to withdraw such claims, with prejudice or otherwise. The legal effect of the withdrawal is a disclaimer of infringement of said claims by defendant, and that fact standing of record will prevent plaintiffs from hereafter asserting future infringement by defendant of any matters previously put in issue by the pleadings in respect to said claims.
The instant motion does not raise any question as to the novelty or validity of the patents in suit. Hence the aforesaid letters patent stand prima facie valid; and the only issue now before the Court is whether infringement may be declared from a mere reading of the claims put in issue on the accused goggles. Tersely stated, the inventive combination claimed for the above patents is the "concept of a frame and lens to detachably hold it in place and wherein the same means function to retain the frame in its assembled position about the lens." (Ex. 9, p. 17.) The scope of the patents may best be illustrated by Claim 2 of Patent No. 2,368,750, as a:
"loop shaped open-end rim member made of a strip of plastic material shaped at its inner edge to fit the contour of the face and provided adjacent its outer edge with an internal groove and at its opposing ends with hook-like elements, and a lens member of transparent material detachably fitted in said rim member and having elements therein for registering engagement with the companion hook-like elements of the rim member to retain the rim and lens members in assembled relation."
Transparently, such a patent monopoly is a combination structural entity.
In determining whether such a combination claim may be read on the accused goggles, we must keep in mind certain fundamental rules of law in relation to patent monopoly. It is axiomatic that the claims of a patent measure the scope of the patent monopoly and as affecting the scope of a patent, where the invention claimed has been limited by Patent Office and such limitation accepted by patentee, as disclosed by the file wrapper, a patent claim will not be deemed to include any of the excluded matter. Smith v. Mid-Continent Inv. Co., 8 Cir., 1939, 106 F.2d 622. As to infringement of a combination claim, generally speaking, every element claimed is deemed to be material thereto, and the omission of one element or ingredient of a structural combination covered by any claim of a patent averts any charge of infringement based on that claim. Getty v. Kinzbach, 5 Cir., 1941, 119 F.2d 249; Etten v. Kauffman, 3 Cir., 1941, 121 F.2d 137; Wichita Visible Gasoline Pump Co. v. Clear Vision Pump Co., 8 Cir., 1927, 19 F.2d 435; Measuregraph Co. v. Grand Rapids Show Case Co., 8 Cir., 1928, 29 F.2d 263. Also, a patent for a combination of separate parts does not cover each part when taken separately. Rowell v. Lindsay, 113 U.S. 97, 5 S.Ct. 507, 28 L.Ed. 906. That the third paragraph of Section 112 of the Patent Act of 1952 (35 U.S.C.A. § 112) provides:
"An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof."
In Stearns v. Tinker & Rasor, 9 Cir., 1957, 252 F.2d 589, 597 the Court construed that part of Section 112, supra, "to mean that while an element in a claim for a combination may be expressed as a means or step for performing a function without recital of structure, material or acts in support thereof; the structure, material or acts must be described in the specification, and if so described, the claim will be construed to cover that which is described and the equivalents thereof." (loc.cit. 597-598). However, where it appears that a patent as granted is for an invention of limited scope, in a crowded art, the question of what is equivalent must be carefully considered...
To continue reading
Request your trial