General Motors Corporation v. Leishman

• Decision Date: 29 July 1949
• Docket Number: Civ. No. 5781-M.
• Court: U.S. District Court — Southern District of California
• Parties: GENERAL MOTORS CORPORATION v. LEISHMAN.

85 F. Supp. 187

GENERAL MOTORS CORPORATION v. LEISHMAN.

Civ. No. 5781-M.

United States District Court S. D. California, Central Division.

July 29, 1949.

Lyon & Lyon, Los Angeles, Cal., for plaintiff.

John Flam, Los Angeles, Cal., for defendant.

McCORMICK, Chief Judge.

This action is for a declaratory judgment. The relief the plaintiff seeks is a judicial determination that certain radio tuning devices manufactured and sold by plaintiff do not infringe Claims 7 to 11, inclusive, of United States Reissue Letters Patent No. 20,827 applied for by defendant May 23, 1938, and granted to him August 16, 1938, and also that such patent claims are invalid. Issue was joined by defendant's answer and his counterclaim whereby he denied the allegations of plaintiff's complaint and affirmatively alleged validity of the patent claims in suit and charged infringement thereof by certain radio tuning devices admittedly made and sold by the plaintiff corporation.

This cause was tried on the merits upon a transfer from another division of this court. It has been ably and exhaustively briefed; the final brief having been filed by defendant on April 16, 1949. Decision has been deferred until the Supreme Court acted upon a petition for certiorari to review a decision of the Court of Appeals of the Tenth Circuit which had invalidated the claims of the patent that are in issue before us. On April 18, 1949, the Supreme Court refused to review the Tenth Circuit decision by denying the petition for certiorari. 336 U.S. 952, 69 S.Ct. 882. Thus the questioned claims involved in this action have been held by a federal appellate court of superior authority to ours to involve no invention, and while the decision of the appellate court in the Tenth Circuit, Richards & Conover Co. v. Leishman, 172 F.2d 365, does not operate to control us in this action, our own Court of Appeals having never specifically invalidated the patent claims in issue, we think, however, that the appellate decision in the Tenth Circuit having been based upon substantially the same record as made herein, we should and do consider such decision as highly persuasive and as weakening any presumption of validity to the claims in suit that would otherwise attach to the Leishman Reissue Patent by reason of its issuance. This, we think, is manifestly the correct position for us to take in the light of the unanimous confirmatory decision of the Tenth Circuit Court of Appeals on rehearing as shown in the reported decision whereby it again rejected the contention that invention is found in the patent claims in controversy.

The purposes, specifications and questioned claims of the Reissue Patent No. 20,827 and of the earlier Letters Patent No. 2,108,538 from which it originated. have been so adequately detailed and stated in the opinion of our Court of Appeals in Leishman v. Associated Wholesale Electric Co., 137 F.2d 722, that we consider repetition here unnecessary.

While, as we have earlier in this memorandum observed, that our Court of Appeals has not definitely adjudicated the issue of patent validity of the claims in action before us, there are rather significant expressions in the opinion of Judge Mathews, writing for the court in Leishman v. Associated Wholesale Electric Co., supra, that induce at least a surmise that our own Appellate Court had its misgivings as to any inventive qualities in the claims of the patent in suit that are again before this court for consideration and decision.

After quoting from the original patent, of which the one in suit is a reissue, and the several claims of the original patent (No. 2,108,538) granted February 15, 1938, the court said:

"Thus the specification of the original patent disclosed a combination comprising rockers, tappets and levers, the tappets and levers constituting what the specification calls a lever assembly; and the claims of the original patent are for combinations each of which includes a lever or levers. No leverless combination is disclosed or claimed in the original patent, nor does it appear from the face thereof that any leverless combination was intended to have been covered or secured thereby.

"As stated before, the specification, the drawing and the claims of the original patent were incorporated, without change, in the reissue patent. Claims 7-11 of the reissue patent are new."

The claims here in suit are then quoted in Judge Mathews' opinion, who then for the court states:

"These claims, it will be observed, are for combinations each of which includes a rocker. Whether the combinations include tappets and levers is not clear. If they do not include levers, the claims are not for the same invention as the original patent and hence are invalid. If they do include levers, the claims are not infringed, for the accused device contains no lever."

It is not, in the light of such language, unjustifiable to infer that the court doubted the existence of invention in the provisions of the reissue patent with which we are concerned in this case.

But we are by no means left in doubt as far as decisional pronouncements of Federal courts in the Ninth Circuit are concerned as to whether the patent claims under scrutiny in light of earlier patents and the state of the applicable art should be viewed as inventive concepts.

In another division of this court and under a record not substantially unlike the one before us, Judge Harrison, in an exhaustive, analytical and reasoned written opinion, has held the same claims of the patent in suit here in controversy to be invalid. Leishman v. Associated Wholesale Electric Company, D.C., 36 F.Supp. 804.

If we are to accept the views of our Court of Appeals as written in the opinion on the appeal from Judge Harrison's decision in the so-called Wholesale Electric Company appeal, supra, as we should and do, we find that considering solely the verbiage of the patent under consideration and its precursors, it is obvious that no leverless combination is disclosed or claimed, and if we should broaden the claims as argued by the defendant upon an assumed application here of the principle of a noted decision of the Supreme Court in Eibel Process Company v. Minnesota & Ontario Paper Company, 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523, we would run counter to the rationale and controlling effect of the two decisions of our Court of Appeals in which the patent in suit was involved. This we are not willing to do under the record before us. See ...