Indiana General Corp. v. Lockheed Aircraft Corp.

• Decision Date: 12 January 1966
• Docket Number: Civ. No. 63-412.
• Citation: 148 USPQ 312,249 F. Supp. 809
• Parties: INDIANA GENERAL CORPORATION, Plaintiff, v. LOCKHEED AIRCRAFT CORPORATION, Defendant.
• Court: U.S. District Court — Southern District of California

249 F. Supp. 809

148 USPQ 312

INDIANA GENERAL CORPORATION, Plaintiff, v. LOCKHEED AIRCRAFT CORPORATION, Defendant.

Civ. No. 63-412.

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

January 12, 1966.

Harris, Kiech, Russell & Kern, Donald C. Russell and Walton Eugene Tinsley, Los Angeles, Cal., for Indiana Gen. Corp.

Mellin, Hanscom & Hursh, Oscar A. Mellin, San Francisco, Cal., and Rodgers Donaldson, Burbank, Cal., for Lockheed Aircraft Corp.

HALL, District Judge.

This is a patent case wherein the plaintiff seeks an injunction and damages for infringement. The defendant's answer denies infringement and alleges invalidity on the customary array of grounds, only one of which is involved at this time.

The matter for immediate consideration and decision is the defendant's motion for summary judgment F.R.Civ.P. 56(b), (c), (e).

Before discussing the specific questions raised in the motion, it is necessary to make some general observations concerning the use of summary judgment and to advert to the contention of the plaintiff that summary judgment is not "ordinarily appropriate" in a patent case. A number of cases are cited to that effect, but, regardless of their holdings, it must be said that summary judgment is not either "ordinarily" or otherwise appropriate in any case, if there is a genuine issue as to a material fact and, if so, that the movant is not entitled to a judgment as a matter of law.

The imprimatur of Rule 1 is that the rules should be construed "to secure the just, speedy, and inexpensive determination of every action." The Federal Rules of Civil Procedure are to be construed broadly and liberally to that end. Phillips v. Baker (9 Cir., 1941), 121 F.2d 752, 754; Fong Sik Leung v. Dulles (9 Cir., 1955), 226 F.2d 74, at 80. Rule 56 was put in the rules to be used, and there is no reason why this salutary doctrine should not apply to Rule 56. Indeed there would now appear to be greater need for an increasing use of summary judgment procedure by defendants since the Supreme Court in Conley v. Gibson¹ and the Ninth Circuit in Corsican Productions v. Pitchess² have for all practical purposes nullified F.R. C.P. 12(b), (6), which permits motions to dismiss for "failure of the pleading to state a claim upon which relief can be granted." Thus defendants in federal courts are forced either to go to the very great expense of a trial on the merits of any and every unsubstantial and coercive claim howsoever unfounded in fact or law which may be made by an imaginative plaintiff in pro. per.³ or by his counsel, or have resort to the summary judgment procedure, which is the only other means provided by the rules to secure the speedy and inexpensive determination of claims for relief.

There is no logical reason why summary judgment should not be granted in patent cases as distinguished from other cases. True, it is sometimes more difficult to isolate the material facts in a patent case than in others, in order to determine if a genuine issue exists as to them; but, if such facts can be isolated and stated with reasonable clarity, the movant is entitled to have the court do so and to determine whether or not there is a genuine issue as to them, and, if not, whether or not such party is entitled to a judgment as a matter of law on such facts. If there is a genuine issue as to such material facts, then a summary judgment should not be granted by the plain terms of the rule, and it is needless to recite the numerous cases to that effect.

The Ninth Circuit, without discussing the propriety of the use of summary judgment procedures, upheld the validity of a patent, but indicated lack of infringement could have been disposed of summarily on examination of the file wrapper, at p. 545 in Moon v. Cabot Shops (9 Cir., 1959), 270 F.2d 539, cert. den. 361 U.S. 965, 80 S.Ct. 596, 4 L.Ed.2d 546. It affirmed summary judgments in Engelhard Industries v. Research Instrumental Corp., 9 Cir., 324 F.2d 347, cert. den. 377 U.S. 923, 84 S.Ct. 1220, 12 L.Ed.2d 215 (rep. below D.C., 196 F.Supp. 138); and Oregon Saw Chain Corp. v. McCulloch Motors Corp. (9 Cir., 1963), 323 F.2d 758. See also McCulloch Motors Corp. v. Oregon Saw Chain Corp. (D.C. 1964), 234 F.Supp. 256, in which this court held three patents invalid on motions for summary judgment, the appeals from which were dismissed. In Barkeij v. Lockheed Aircraft Corp. (9 Cir., 1954), 210 F.2d 1, at page 2, the Ninth Circuit said: "* * * it is the duty of the court to dismiss a patent infringement suit whenever it affirmatively appears that the patent is invalid." (Citing cases.) If it affirmatively appears on a motion for summary judgment that the patent is invalid, the duty to dismiss is as compelling as it would be after hearing evidence. While the Barkeij case was dismissed at the conclusion of plaintiff's case on trial, nevertheless, as pointed out in Allen v. Radio Corporation of America (D.C.Del.1942), 47 F.Supp. 244, there is no reason why a patent case should not be decided on a summary judgment when it appears that there is no genuine issue as to any material fact.

In light of the foregoing general principles I will proceed to an examination and determination of the matters involved on this motion.

Broadly stated, the ground for the motion is that under F.R.C.P. 56 there is no genuine issue as to the following material facts, viz.: the invention and its use was described in printed publications in this country, and the invention was in public use, on sale, and sold in this country, all more than one year prior to the earliest date to which plaintiff is entitled as the date of the application for the patent in suit, which would void the patent as being in contravention of 35 U.S.C. 102 (b).⁴

Those facts are material facts on the question of validity, and if there is no genuine issue as to them, it can be said, without further discussion, that the defendant would be entitled to a judgment of invalidity of the claims involved as a matter of law.

In order to reach the question required to be resolved on this motion it is necessary to have a general understanding of the patent and the products involved. It is patent No. 2,981,689 for "Square Loop Ferrites" and was granted April 25, 1961. The "new and useful" thing which the plaintiff claims to be disclosed by the patent is that "hysteresis loops of substantially square, or rectangular shape" is a property of the ferromagnetic ceramic bodies which are produced under it.

The product involved is used in various electronic devices, but probably its greatest use is as a magnetic memory core for electric computers. It may take many forms and shapes. It can be about the circumference and thickness of the period which is set off immediately following this line in the middle of the page,

with a hole in it.

The product in that form may be strung on wires which permits many thousands to be used in a small space in a computing machine.

The specifications in the patent in suit give seven examples in technical language⁵ of different formulas for making the product, each of which shows the "mol percent"⁶ of each component and certain properties of the finished product. The knowledge that certain materials produced a hysteresis loop when magnetized, is not new, but a hysteresis loop which becomes square or rectangular when magnetized and the uses and advantages of such squareness is new, and is the heart of plaintiff's invention.

The difference in a general way between a typical hysteresis loop and a square one is not difficult of understanding.

Fig. 1⁷ of the patent in suit is illustrative of both. In Fig. 1, a typical hysteresis loop is shown by the dotted lines, and is of a general elliptic shape, and a square hysteresis loop is shown by the solid lines, and is square or rectangular in shape. In Fig. 1 a magnetizing force, in terms of oersteds,⁸ is applied in a positive direction, i. e., from left to right in Fig. 1. It begins at a designated point in the lower lefthand corner of Fig. 1 and in the ordinary elliptical hysteresis loop the magnetic flux follows the dotted lines, increasing in "gausses"⁹ in a positive (up) direction on Fig. 1 until it levels off at about 2000 gausses as shown in the upper righthand corner of Fig. 1. If the magnetizing force is removed, the magnetic flux drops but does not drop back to zero. Instead, it stops at a point called remanence¹⁰ (sometimes called retentivity), which point is marked as 1000 gausses in the ordinary elliptical loop on the upper (positive) part of the solid vertical line in Fig. 1. If the material is capable of producing a square loop, the magnetic flux, instead of dropping to the point marked 1000 gausses on Fig. 1, does not drop that far but "squares" off in a rectangular shape and retains a remanence of about 2000 gausses as marked on the upper part of the solid vertical line on Fig. 1.

The technical advantage of a material capable of producing a square hysteresis loop lies principally in the fact that when the appropriate reverse impulse is applied the sharp cornered "square" or "rectangular" loop responds almost instantaneously with an effect similar to the sudden snapping of a mechanical switch.

The practical and commercial advantage of a product which will produce a square hysteresis loop lies not only in the fact that it replaced the bulky vacuum tubes previously used in calculating machines, but also shortened the response time of magnetic memory systems by a ratio claimed to be about 40 to 1, permitting responses to be returned from memory cores in micro-seconds or fractions thereof, thus not only reducing the great bulk of the early electronic machines manyfold, but incredibly increasing the speed of use.

The chronological history of the patent in suit is necessary to an understanding of the ultimate question to be resolved.

The patent is the end result of four different applications for patent: The application (No. 442,535, hereafter...