Moist Cold Refrigerator Co. v. Lou Johnson Co., No. 13811.

CourtUnited States Courts of Appeals. United States Court of Appeals (9th Circuit)
Writing for the CourtHEALY, POPE, and CHAMBERS, Circuit
Citation217 F.2d 39,103 USPQ 410
Decision Date28 February 1955
Docket NumberNo. 13811.
PartiesMOIST COLD REFRIGERATOR CO., Inc., a corporation, Appellant, v. LOU JOHNSON CO., Inc., a corporation, Meier & Frank Co., Inc., a corporation, Admiral Corporation, a corporation, and Amana Refrigeration, Inc., a corporation, Appellees.

103 USPQ 410, 217 F.2d 39 (1954)

MOIST COLD REFRIGERATOR CO., Inc., a corporation, Appellant,
v.
LOU JOHNSON CO., Inc., a corporation, Meier & Frank Co., Inc., a corporation, Admiral Corporation, a corporation, and Amana Refrigeration, Inc., a corporation, Appellees.

No. 13811.

United States Court of Appeals, Ninth Circuit.

November 24, 1954.

Writ of Certiorari Denied February 28, 1955.


Buckhorn & Cheatham, Orme E. Cheatham, Portland, Or., John B. Cuningham, Davis, Hoxie & Faithfull, T. Roland Berner, New York City, for appellant.

Leonard S. Lyon, Lyon & Lyon, Los Angeles, Cal., W. Elmer Ramsey, Portland, Or., Frank H. Uriell, Charles L. Byron, William E. Lucas, Chicago, Ill.,

217 F.2d 40
Beahl T. Perrine, Cedar Rapids, Iowa, for appellees

Before HEALY, POPE, and CHAMBERS, Circuit Judges.

Writ of Certiorari Denied February 28, 1955. See 75 S.Ct. 441.

HEALY, Circuit Judge.

This matter is before us on appeal from a summary judgment for the defendants (appellees) in an action brought by appellant for infringement of reissue patent No. 23,058.

Appellant is assignee of the original patent No. 2,056,165, which was issued October 6, 1936 after protracted proceedings before the Patent Office. The patent claimed a combination of known refrigeration elements and principles to create separate refrigeration compartments for foods desired merely to be cooled and those desired to be frozen, and to eliminate the necessity of defrosting. The sole claim was to the combination. It is unnecessary for the purposes of this case further to describe the apparatus.

In 1943 Refrigeration Patents Corporation, the then assignee of all rights in the original patent, brought an action for infringement in the District Court for the Northern District of Illinois against the Stewart-Warner Corporation. Upon trial the jury found that the invention was patentable and produced improved results, and it awarded damages in a large sum. The question of functional claims was not presented to the jury. Stewart-Warner appealed from the judgment, and in the interim between appeal and decision thereof by the Circuit Court the Supreme Court decided Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1, 67 S.Ct. 6, 91 L.Ed. 3. The Court of Appeals reversed on the ground that the claims of the patent were stated in terms of results and failed adequately to describe the means by which the results would be obtained, in violation of 35 U.S.C.A. § 33.1 Refrigeration Patents Corporation v. Stewart-Warner Corporation, 7 Cir., 159 F.2d 972, certiorari denied 331 U.S. 834, 67 S.Ct. 1515, 91 L.Ed. 1847. The Court of Appeals, as its opinion shows, was influenced and guided throughout by the language of Halliburton, supra.

The decision in Stewart-Warner was handed down in February of 1947. Rehearing was denied, and a fruitless effort was thereafter made to obtain certiorari. The application for reissue was filed June 18, 1948 on the ground that the original patent had been declared invalid as functional, and that such a decision could not have been foreseen when the patent was obtained. The reissue patent in suit was granted in December of 1948.

The present action was begun in April of 1951. After issue joined, both parties moved for a summary judgment. Pre-trial proceedings were held by the court and a pre-trial order was formulated presenting certain opposing contentions of the parties based on stipulated facts. Additional issues were segregated for trial. Defendants' motion for a summary judgment was then granted on the ground that reissue No. 23,058 is void because no error through inadvertence, accident, or mistake as required by the reissue statute, 35 U.S.C.A. § 64,2 was or

217 F.2d 41
could be shown under the facts. In granting the judgment defendants' contentions 1 and 2 embodied in the pre-trial order were upheld. These contentions are shown on the margin.3

The theory of the district court was that as a matter of law failure to anticipate a court decision does not constitute inadvertence, accident, or mistake within the intendment of the statute. In the findings of fact which the court made there was no finding that the original patentees deliberately and skillfully drafted the patent to cover any means which anyone might ever discover to produce the same result, or that they in any way acted fraudulently or deceptively. It is therefore clear that the third sentence of appellees' first contention footnote 3 was not accepted.

In ruling as it did the court relied upon two cases, General Radio Co. v. Allen B. Du Mont Laboratories, 3 Cir., 129 F.2d 608, certiorari denied 317 U.S. 654, 63 S.Ct. 50, 87 L.Ed. 526, and Heidbrink v. Charles H. Hardessen Co., 7 Cir., 25 F.2d 8, ceriorari denied 278 U.S. 629, 49 S.Ct. 29, 73 L.Ed. 548. These cases are plainly distinguishable on their facts. Each declared reissue patents to be void when issued because of the functional nature of the original claims. But the basis of the decisions was a finding that the patentees in obtaining the original patents acted with deceptive intent by deliberately drawing their original claims so broadly that they would cover all means of producing the same result. See page 611 of 129 F.2d of General Radio and page 10 of 25 F.2d of Heidbrink. The functional character of the claims in the original patent in General Radio was apparent upon the face of the patent. The reissue patent was obtained on the advice of attorneys eight years after the original patent was issued without ever having tested the latter's validity in court. In Heidbrink v. McKesson, 290 F. 665, 668, decided by the Sixth Circuit, the original Heidbrink patent had been declared void and the claims held to be deliberately and skillfully drafted to cover any means of producing the result; and the Seventh Circuit accepted this finding in Heidbrink v. Hardessen, supra.

In all the history of the original and reissue patents involved here no finding of such a deceptive intention has been made by any court. On oral argument before us appellees' counsel conceded that no deceptive intention was present when the original claims were drawn. We think the facts in the record warrant a finding that the original patentees acted in good faith and that their aim was to securely protect their full invention, not to cover any means of producing the result. The functional nature of the original claims was a very close question.4

217 F.2d 42
They were tested in court, and the assignee of the patent applied for a reissue promptly upon the conclusion of the Stewart-Warner litigation

The point we have to consider is the validity of a reissue patent procured after the claims of the original patent had been judicially declared void as functional, the original having been obtained in good faith without fraudulent or deceptive intention. In this connection we are obliged to bear in...

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6 practice notes
  • Bryan v. Sid W. Richardson, Inc., No. 16389.
    • United States
    • U.S. Court of Appeals — Fifth Circuit
    • April 8, 1958
    ...material, or acts, described in the specification and equivalents thereof." 10 Cf. Moist Cold Refrigerator Co. v. Lou Johnson Co., 9 Cir., 217 F.2d 39, 42; see also Application of Lundberg, Cust. & Pat.App., 244 F.2d 543, 547. 11 Faulkner v. Gibbs, 338 U.S. 267, 70 S. Ct. 25, 94 L.Ed. 62; G......
  • Moist Cold Refrigerator Co. v. Lou Johnson Co., No. 15057.
    • United States
    • U.S. Court of Appeals — Ninth Circuit
    • November 30, 1957
    ...defendants. The plaintiff appealed, and this Court reversed and remanded, Moist Cold Refrigerator Co., Inc., v. Lou Johnson Co., 9 Cir., 217 F.2d 39, 40. The decision of this Court in the prior appeal discusses the history of litigation surrounding the original patent, No. 2,056,165, issued......
  • St. Regis Paper Company v. Tee-Pac, Inc., Civ. A. No. C 71-446
    • United States
    • United States District Courts. 6th Circuit. United States District Court of Northern District of Ohio
    • January 8, 1973
    ...following the quoted excerpt cites two cases from the Ninth Circuit Court of Appeals. In Moist Cold Refrigerator Co. v. Lou Johnson Co., 217 F.2d 39, 44 (9th Cir. 1954), cert. denied, 348 U.S. 952, 75 S.Ct. 441, 99 L.Ed. 744 (1955), that Court of Appeals There has been some discussion of th......
  • Application of Wadlinger, Patent Appeal No. 8997.
    • United States
    • United States Court of Customs and Patent Appeals
    • May 23, 1974
    ...to allow recovery against that defendant because of its intervening rights. See also Moist Cold Refrigerator Co. v. Lou Johnson Co., 217 F.2d 39 (9th Cir. 1954). Accordingly, we see no basis for holding appellants to the case law which may have existed at the time of their original patent a......
  • Request a trial to view additional results
6 cases
  • Bryan v. Sid W. Richardson, Inc., No. 16389.
    • United States
    • U.S. Court of Appeals — Fifth Circuit
    • April 8, 1958
    ...material, or acts, described in the specification and equivalents thereof." 10 Cf. Moist Cold Refrigerator Co. v. Lou Johnson Co., 9 Cir., 217 F.2d 39, 42; see also Application of Lundberg, Cust. & Pat.App., 244 F.2d 543, 547. 11 Faulkner v. Gibbs, 338 U.S. 267, 70 S. Ct. 25, 94 L.Ed. 62; G......
  • Moist Cold Refrigerator Co. v. Lou Johnson Co., No. 15057.
    • United States
    • U.S. Court of Appeals — Ninth Circuit
    • November 30, 1957
    ...defendants. The plaintiff appealed, and this Court reversed and remanded, Moist Cold Refrigerator Co., Inc., v. Lou Johnson Co., 9 Cir., 217 F.2d 39, 40. The decision of this Court in the prior appeal discusses the history of litigation surrounding the original patent, No. 2,056,165, issued......
  • St. Regis Paper Company v. Tee-Pac, Inc., Civ. A. No. C 71-446
    • United States
    • United States District Courts. 6th Circuit. United States District Court of Northern District of Ohio
    • January 8, 1973
    ...following the quoted excerpt cites two cases from the Ninth Circuit Court of Appeals. In Moist Cold Refrigerator Co. v. Lou Johnson Co., 217 F.2d 39, 44 (9th Cir. 1954), cert. denied, 348 U.S. 952, 75 S.Ct. 441, 99 L.Ed. 744 (1955), that Court of Appeals There has been some discussion of th......
  • Application of Wadlinger, Patent Appeal No. 8997.
    • United States
    • United States Court of Customs and Patent Appeals
    • May 23, 1974
    ...to allow recovery against that defendant because of its intervening rights. See also Moist Cold Refrigerator Co. v. Lou Johnson Co., 217 F.2d 39 (9th Cir. 1954). Accordingly, we see no basis for holding appellants to the case law which may have existed at the time of their original patent a......
  • Request a trial to view additional results

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