Frantz Manufacturing Co. v. Phenix Manufacturing Co., 67-C-335.
| Decision Date | 11 June 1970 |
| Docket Number | No. 67-C-335.,67-C-335. |
| Citation | 314 F. Supp. 99 |
| Parties | FRANTZ MANUFACTURING COMPANY, Plaintiff, v. PHENIX MANUFACTURING CO., Inc., Defendant. |
| Court | U.S. District Court — Eastern District of Wisconsin |
Prangley, Clayton, Mullin, Dithmar & Vogel by Mark H. Clayton, Chicago, Ill., for plaintiff. Wheeler, Wheeler, House & Clemency, by Joseph P. House, Milwaukee, Wis., of counsel.
Paul R. Puerner, Michael, Best & Friedrich, Milwaukee, Wis., for defendant.
DECISION AND ORDER
Subsequent to a trial to the court and an opinion by the court dated January 20, 1970, 307 F.2d 822, the plaintiff filed a motion which sought (1) to add an exhibit and (2) to amend the opinion in several respects.
The exhibit, which was not offered at the trial and which the plaintiff now wishes to enter into evidence, is a copy of United States Letters Patent No. 3,104,699 ('699). The plaintiff's complaint alleged that the defendants were infringing the '699 patent in addition to patent numbered 3,169,612 ('612). However, by stipulation dated May 2, 1969 the parties agreed that the defendant was not infringing the '699 patent, and accordingly the claims dealing with this patent in the complaint were dismissed.
Thus, no evidence as to the '699 patent was introduced. Now, however, subsequent to the filing of the court's opinion, the plaintiff proposes to introduce the '699 patent into evidence in order to bring the '612 patent under 35 U.S.C. § 120; this would circumvent the one-year prior use rule of 35 U.S.C. § 102(b) by entitling the '612 patent to the benefit of the earlier filing date of the '699 patent.
Rule 52(b), Federal Rules of Civil Procedure, allows the court to amend findings or make new findings within 10 days after judgment. Since only an opinion has been filed, and no judgment (the judgment awaiting proposals to be submitted by the parties), Rule 52(b) does not bar the proposed offer. Although it appears that the addition of new evidence should more properly be made under the protective covering of a motion for a new trial under Rule 59(a), nevertheless the court concludes that the better course is to grant the motion to add patent numbered 3,104,699 as plaintiff's exhibit 25. In Kardon v. National Gypsum, Co., 83 F. Supp. 613, 614 (E.D.Pa.1947), the court said, when it agreed to reopen:
"The defendants' requests are merely amplifications of certain findings of fact contained in the opinion and are in nowise in conflict with those findings."
In Hernberg v. Tipton, 133 F.2d 67, 69 (7th Cir. 1943), the court held that reopening after judgment to admit formal proof in support of the judgment was in the sound discretion of the trial court; consequently, reopening after an opinion but before judgment should surely rest in this court's discretion. Because my earlier opinion did not cover the issue of the earlier filing date, I now find that the better exercise of discretion requires that the '699 patent be entered into evidence so that I may amplify my findings and clarify the filing date issue.
The plaintiff, in urging that 35 U.S.C. § 120 applies, presents a question which was not previously resolved by the court in this case. Title 35 U.S.C. § 120 states:
"An application for patent for an invention disclosed in the manner provided by the first paragraph of section 112 of this title in an application previously filed in the United States by the same inventor shall have the same effect, as to such invention, as though filed on the date of the prior application, if filed before the patenting or abandonment of or termination of proceedings on the first application or on an application similarly entitled to the benefit of the filing date of the first application and if it contains or is amended to contain a specific reference to the earlier application."
In Bendix Corporation v. Balax, Inc., 421 F.2d 809, 817 (7th Cir. 1970), the court indicated that the following requirements are set forth in § 120:
"To come within the purview of Section 120, the later application must 1) disclose an invention disclosed in the manner provided in 35 U.S.C.A. § 112 in an earlier application; 2) be by the same inventor; 3) be filed before the patenting of the earlier application; and 4) contain a specific reference to the earlier application."
As in the above case, I find that all conditions are met except the disclosure-in-an-earlier-application requirement. There is an important difference between the '699 claims and the '612 claims: the '612 patent claims a "gripping member * * * pressed into and embedded in said panel flange;" the '699 patent contains no equivalent claim. I read 35 U.S.C. § 120 and its interpretation in Bendix to require a closer identity of...
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Taylor v. Teletype Corp.
...the motion is not untimely, and this Court may agree to consider the motion at its discretion. See Frantz Manufacturing Co. v. Phenix Manufacturing Co., 314 F.Supp. 99, 99-100 (E.D.Wis.1970). Defendant's second contention is also unpersuasive. Although Judge Arnold denied the section 1981 c......
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Frantz Manufacturing Co. v. Phenix Manufacturing Co.
...invention.9 Plaintiff thereafter was granted leave to supplement the record by filing a copy of the '699 patent, but the court, 314 F. Supp. 99, rejected the contention that the § 102(b) defense could be avoided by giving the '612 patent the benefit of '699's filing date. The design patent ......