McCULLOCH MOTORS CORPORATION v. Oregon Saw Chain Corp.
| Decision Date | 12 October 1964 |
| Docket Number | No. 919-57.,919-57. |
| Citation | 234 F. Supp. 256 |
| Court | U.S. District Court — Southern District of California |
| Parties | McCULLOCH MOTORS CORPORATION, a corporation, Plaintiff, v. OREGON SAW CHAIN CORP., a corporation, Defendant. |
Whann & McManigal, Los Angeles, Cal., for plaintiff.
Lyon & Lyon, Los Angeles, Cal., for defendant.
There are five patents involved in this case, two belonging to the defendant, Oregon Saw Chain Corporation, and three belonging to the plaintiff, McCulloch Motors Corporation.
Defendant Oregon has filed a Motion for partial summary judgment as to McCulloch's patent No. 2,923,329 on the ground of file wrapper estoppel, and on the further ground that the patent is unenforcible because of misrepresentation to the Patent Office during the prosecution of the patent.
A motion for summary judgment is proper where there is no genuine issue of a material fact as to the question of infringement due to file wrapper estoppel. F.R.Civ.P. 56(b); Moon v. Cabot Shops (9 Cir. 1959) 270 F.2d 539; Engelhard Industries v. Research Instrumental (S.D.Calif.1963) 196 F.Supp. 138, Aff. 9 Cir., 324 F.2d 347, Cert. den. 377 U.S. 923, 84 S.Ct. 1220, 12 L.Ed.2d 215; Oregon Saw Chain Corp. v. McCulloch Motors Corp. (9 Cir. 1963) 323 F.2d 758.
The application for the patent was filed May 19, 1955, and was finally granted February 2, 1960. There were several amendments and rejections by the Patent Office which are unnecessary to review here.
It is asserted that Defendant Oregon's 35 Bolo saw chain and its 58 Bolo saw chain infringe Claims 10, 11, 13 and 14 of Patent No. 2,923,329.
Each of these claims was finally rejected by the Patent Office, but they were thereafter amended so as to add at the end of the claim, the following language: "Said depth gage extends outwardly with a portion disposed on one side of the link center of the saw chain to engage a portion of the kerf bottom on one side of the plane in each instance." (Emphasis supplied). With the addition of the foregoing language and the representation to the Patent Office that thus the gage would ride on the "relatively smooth side of the kerf," the claims were allowed.
Under the doctrine of file wrapper estoppel, the applicant abandons all that is embraced in the difference between the application as it stood before the amendment and the application as it stands after the amendment. Thus unless the depth gage of Oregon's 35 Bolo and 58 Bolo extend outwardly from the plane of the sawing chain, there is no infringement.
An examination of the alleged infringing chains does not show any portion of the depth gages on the alleged infringing chains Bolo 35 and Bolo 58 to extend outwardly in the slightest in the plane of the saw chain. No expert testimony is needed to explain or demonstrate what is so plainly visible to anyone, and concerning which there is no genuine issue of fact.
Counsel for plaintiff, in his response to defendant's Motion for summary judgment on Patent No. 2,923,329, concedes that the "depth gage is straight as to Oregon's chain and as to McCulloch's chain." If it is straight, it cannot extend outwardly.
The word "outwardly" obviously was not used accidentally, as the patentee, in Column 3, line 30 of the Patent, in describing the cutter link of the patent, referred to "a shank 14 which extends from the lower edge of the side link 12a downwardly and outwardly away from the central plane a — a of the chain."
Figure 3, Figure 4, Figure 5 and Figure 6 of the Patent all show either the cutter or the gage to extend outwardly from the plane of the saw chain.
Similar language "downwardly and outwardly" is used in describing the gage 30 and shank 33 in Figure 4 (Column 4, lines 27-28); and in Figure 6 (Column 5, lines 31-33) similar language is used.
Plaintiff cannot now extend the coverage of his patent to that which he specifically restricted in order to obtain the patent. Oregon Chain Saw Corp. v. McCulloch Motor Corp. (9 Cir. 1963) 323 F.2d 758, and cases therein cited.
The second ground of defendant's Motion for partial summary judgment is that the plaintiff is guilty of unclean hands because a representation made by one of counsel for plaintiff to the Patent Office is said to be false.
The statement was that the chain structure "has met with substantial commercial success and has been broadly adopted as a new design by others in the saw chain manufacturing industry." The portion of that statement which defendant attacks is that the chain "has met with substantial commercial success." In the Interrogatories of Defendant Oregon to Plaintiff McCulloch, plaintiff states: "The chain was never sold commercially," as hereinafter set forth:
Interrogatories Re: Patent No. 2,923,329:
McCulloch argues that there is no showing that the Patent Office or the Examiner depended upon such statement for the allowance of the patent. But Oregon urges that commercial success is one of the grounds used in arguing patentability and invention in cases where such is in doubt. Jungersen v. Ostby & Barton Co. (1949) 335 U.S. 560, 69 S.Ct. 269, 93 L.Ed. 235; Photochart v. Photo Patrol, Inc. (9 Cir. 1951) 189 F.2d 625; Farr Co. v. American Air Filter Co. (9 Cir. 1963) 318 F.2d 500.
Here, quite evidently, the patentability was in doubt because the claims had been finally rejected by the Examiner.
While it would be logical to assume that the representation of commercial success was, in part, relied on by the Patent Office in issuing the patent, nevertheless in view of the Opinion of the Ninth Circuit in Republic v. B. W. Photo Utilities (1963) 319 F.2d 347, I do not believe the Court is justified in granting summary judgment on that ground. This is particularly so because Oregon is entitled to summary judgment on the ground of file wrapper estoppel.
It will be unnecessary to make findings of fact and conclusions of law as there is no genuine issue as to the terms of the patent and the fact that Oregon's gage is not "outwardly extending."
The Court is signing the Judgment.
The defendant, Oregon Saw Chain Corporation, has filed a Motion for summary judgment on the ground that Patent No. 2,913,023 is invalid and void as not being in compliance with 35 U.S.C. § 112 in the description of the invention and the manner and process of making and using it so that any person skilled in the art to which it pertains may make and use it, and that the claims do not particularly point out and distinctly claim the subject matter which applicant regards as his invention.
The patent has to do with links in chain saws for sawing wood. It has five claims. The novelty is said by the plaintiff to lie in the fact that each claim calls for "long side links and short center links alternately connected."
Nothing is said in the patent as to how long the "long" links shall be, or how "short" the short links shall be, either in inches, tenths, hundredths, or thousandths of inches or in the ratio of "long links" to "short links", or of percentage of difference between them.
There is no genuine issue as to any material fact. In fact, there are no material facts except the fact that the patent was issued, and there is no genuine issue as to that.
F.R.Civ.P. 56 authorizes summary judgment in patent cases. Oregon Saw Chain Corp. v. McCulloch Motors Corp. (9 Cir. 1963) 323 F.2d 758. In Barkeij v. Lockheed Aircraft Corp. (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.Dela.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.
The leading case on the subject of inadequate disclosure and description is General Electric Co. v. Wabash Appliance Co. (1938) 304 U.S. 364, 58 S.Ct. 899, 82 L.Ed. 1402. In that case, the Supreme Court held the patent invalid. There had been a trial, but the court held that it was not necessary to have had the trial, saying: what is now 35 U.S.C. §§ 111 and 112. Italics supplied.
The defendant has filed an affidavit of an expert. This affidavit amounts to little more than an argument and conclusions, which the Court will disregard. Engelhard Industries v. Research Instrumental Corp. (9 Cir. 1963) 324 F.2d 347.
Counsel for McCulloch argues that the Court should hear evidence as to what someone skilled in the art would do with the patent. But if the Court were required to hear testimony of someone skilled in the art as to what was meant by "long" and "short," then no patent case could be decided on a question of law, and clearly, the prevailing current authority is to the effect that invention and patentability are matters of law to be determined by ...
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Indiana General Corp. v. Lockheed Aircraft Corp.
...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 wer......