Hickory Springs Mfg. Co. v. Fredman Bros. Furniture Co.

• Decision Date: 18 February 1972
• Docket Number: No. P-3170.,P-3170.
• Citation: 338 F. Supp. 636
• Parties: HICKORY SPRINGS MANUFACTURING COMPANY, Plaintiff, v. FREDMAN BROTHERS FURNITURE COMPANY, Inc. and Harry Fredman, Defendants.
• Court: U.S. District Court — Southern District of Illinois

338 F. Supp. 636

HICKORY SPRINGS MANUFACTURING COMPANY, Plaintiff, v. FREDMAN BROTHERS FURNITURE COMPANY, Inc. and Harry Fredman, Defendants.

No. P-3170.

United States District Court, S. D. Illinois, N. D.

February 18, 1972.

Tim W. Swain, II, Peoria, Ill., Dalbert U. Shefte, Charlotte, N. C., for plaintiff.

Harvey B. Jacobson, Jr., Washington, D. C., Lyle W. Allen, Peoria, Ill., for defendants.

OPINION AND ORDERS

ROBERT D. MORGAN, District Judge.

By its complaint herein, plaintiff sought a declaratory judgment that Fredman Patent No. 3,118,151 was invalid, or, if valid, that it was not infringed by plaintiff's accused product. Subsequent to the filing of the complaint, the Court of Appeals for the Seventh Circuit affirmed a judgment in another cause finding claim 3 of that patent invalid and finding claim 4 thereof valid, but not infringed by the accused products there involved. Fredman v. Harris-Hub Company, Inc., 442 F.2d 210 (7 Cir. 1971). On August 24, 1971, 330 F.Supp. 978, this court held claim 3 of such patent to be invalid, but denied plaintiff's motion to the extent that it sought summary judgment that claim 4 of the patent was not infringed by plaintiff's accused product.

Meanwhile, on June 7, 1971, defendant, Harry Fredman, had filed an application for reissue of his patent. That application was allowed and Reissue Patent No. 27,182 was issued to Fredman on September 21, 1971. The pleadings were then amended to substitute Reissue No. 27,182 for the original patent as the patent in suit.

The cause is now before the court upon plaintiff's motion for a summary judgment to declare reissue claims 3, 4, 6, 7 and 8 and original claim 4 invalid.

CLAIMS 3, 6, 7 & 8

Insofar as reissue claim 3 is concerned, plaintiff asserts the contention that that claim, if held valid, would enlarge the scope of the claims of the original patent in violation of the provisions of 35 U.S.C. § 251. Since reissue claims 6, 7 and 8 are dependent on reissue claim 3, plaintiff argues that those claims must fall automatically if reissue claim 3 is held to be invalid.

Section 251 provides, in pertinent part:

"* * * No reissued patent shall be granted enlarging the scope of the original patent unless applied for within two years from the grant of the original patent." 35 U.S.C. § 251.¹

Decision of the issue presented as to reissue claim 3 requires a comparison of the scope of that claim with the scope of the claims of the original patent.

Defendant argues that original claim 3, having been adjudged invalid, has no scope, and that the comparison of reissue 3 must be limited to the scope of other original claims, except original 3. That argument must be rejected. Original 3 is a nullity and it has no scope in the context of any contention that it might be infringed. However, it must be considered in the context of any determination whether reissue claims enlarge the scope of the claims of the original patent which they supersede. The determination question is whether a contested reissue claim is broader in scope than the apparent scope of the totality of the claims allowed in the original patent.

The patent relates to a bed assembly, comprised of conventional end boards, a conventional spring assembly, and a pair of one-piece metallic side rails with a tension means interconnecting the side rails at the center thereof, designed to support the spring assembly firmly without the use of cross slats and to rigidify the total bed combination.

In general, the invention was designed to avoid the problems inherent in the use of slats, with conventional side rails, to support the spring assembly of beds. The greatest problem in the use of slats was the tendency of the slats to fall under the stress of the downward flexion of the slats themselves and outward flexion of the side rails. Also, the invention was designed to cope with the fact that, though spring assemblies are of a standardized width, i. e., 52½ inches for double beds, the width between the notches on each end board, in which the ends of the side rails are supported, may vary to as much as 54½ inches apart.

In the context of those problems recited in the patent specifications, the Court of Appeals in Harris-Hub defined the inventive novelty of defendants' patent. Thus, the court said:

"Plaintiff discovered an ingenious and by no means obvious solution to the problem. He designed new side rails which differed from the conventional in several respects. They contained a broader horizontal ledge which provides firm support for the spring assembly. More significantly, they were designed to provide a snug clamping relationship between the vertical portions of the two side rails and the spring assembly, with the side rails retaining their parallelism with each other and their firm support for the spring assembly, notwithstanding variations in the distance between headboard notches.

"The patented rail has both a horizontal and a vertical flange over the major portion of its length, but near its ends the horizontal flange flows downwardly into the plane of the vertical flange. In consequence, when the rails are affixed to the headboards and footboards, and interconnected by a centrally located tension member, deflection may occur at the ends of the rails while the major portions of the rails maintain their parallel relationship with each other. * * *

"* * * The Harris-Hub device does nothing more than interconnect the centers of two conventional metal siderails with a strap that applies sufficient tension to bow the rails inwardly against the bedding." 442 F. 2d at 213.

In affirming the District Court's decision that original claim 3 was anticipated by the prior art and, thus invalid, the court said:

"* * * We, therefore, construe claim 3 as an anti-spread device contemplating a slatless assembly for beds with end board notch separations equal to the width of the springs. As such, it was plainly invalid.

"Apart from the question of anticipation, we would have grave doubt about the validity of plaintiff's patent if his idea embodies nothing more than a tension member connecting two ordinary metal side rails." (Citations omitted.) 442 F.2d at 215.

In discussing the trial court's finding that claim 4 was not infringed, the court defined what the invention is not in the following language:

"The text of the patent indicates that one of the inventor's assumptions, which required him to design a novel rail with its horizontal flange flaring into the vertical at its ends, was that the `right angular cross-sectional configuration will not flex.' If flexing a conventional rail into a bow had been within his conception, and if that configuration produced a result which is truly an equivalent of his invention, he took unnecessary pains to develop his sophisticated rail design. We think a fair reading of the entire patent indicates that his contribution to the art was predicated on an assumption that the portion of the rail which provides both clamping pressure from the vertical flange and adequate support from the horizontal flange `will not flex.'

"We are also persuaded that plaintiff cannot deny that the true parallelism of his device produces a result sufficiently superior to the bowing of conventional rails to preclude application of the doctrine of equivalence. The benefits of parallelism are described in the specifications and, in large part, constitute the objective achieved by the special design of the rails. As we consider the rail design a crucial feature of plaintiff's patented invention, we are unwilling to extend the scope of plaintiff's monopoly to include all slatless bed assemblies using a tension member to interconnect conventional side rails. Plaintiff has no patent on the function performed by his invention.

The substance of plaintiff's invention includes an original design for side rails.

"We read the language which plaintiff used in his patent as foreclosing his claim that tension sufficiently strong to bow conventional rails is the equivalent of his unique side rail design. He may not thus demean his own ingenious concept." (Footnotes omitted.) 442 F.2d at 215-216.

The quoted language from Harris-Hub can only be read as holding that the essential element of invention was the unique design of defendant's side rail, as described in claims 1 and 4 of the original patent, which enabled deflection of the rail ends while, in conjunction with the tension member between the rails, the major portion of the rails maintained a constant, spaced, parallel relationship each to the other. Original claim 3 was invalid because it failed to include the limitation of that unique rail design, and read on any concept of the use of a tension device to avoid outward flexion of, or to deflect inward, any rail, including conventional rails.

When reissue claim 3 is compared to the original patent claims, as there interpreted, the conclusion is inescapable that reissue 3 is invalid.

Reissue 3 (with italicized material added to, and bracketed material deleted from, the text of original claim 3) reads:

"3. A slatless bed assembly comprising a pair of side rails, a pair of end boards interconnecting and extending perpendicularly to said rails, a spring assembly supported on and between said rails and between said end boards, each of said rails being of one-piece metallic construction and having a right angular cross-sectional configuration substantially over a major portion of its length and including a horizontal flange extending under the spring assembly and a vertical flange, and having at each end thereof an end portion which permits the horizontal flanges to be pulled in to underlying relation to the spring assembly, and a tension member interconnecting the central portions of the rails for pulling the rails inwardly from their respective at-rest positions so that said vertical flanges contact the spring assembly, notwithstanding variations in the width of the end boards, thereby

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