Molinaro v. Sears, Roebuck & Co.

• Decision Date: 24 October 1979
• Docket Number: No. 76 CIV. 2582(MP).,76 CIV. 2582(MP).
• Parties: Edward T. MOLINARO, and Anthony P. Catanzaro, Plaintiffs, v. SEARS, ROEBUCK AND COMPANY, Defendant.
• Court: U.S. District Court — Southern District of New York

478 F. Supp. 818

Edward T. MOLINARO, and Anthony P. Catanzaro, Plaintiffs, v. SEARS, ROEBUCK AND COMPANY, Defendant.

No. 76 CIV. 2582(MP).

United States District Court, S. D. New York.

October 24, 1979.

E. Leigh Hunt, Wilmington, Del., for plaintiff Molinaro.

Kenyon & Kenyon, New York City, for defendant by George E. Badenoch, New York City.

OPINION

POLLACK, District Judge.

Defendant moves for summary judgment in its favor pursuant to Fed.R.Civ.P. 56. For the reasons shown hereafter the motion will be granted.

This is one of more than 20 actions instituted by these plaintiffs against various manufacturers, distributors, and retailers of radio receiving equipment, alleging infringement of U. S. Patent 2,906,875, issued on September 29, 1959 to plaintiff Edward T. Molinaro, and having expired on September 29, 1976. Co-plaintiff Anthony P. Catanzaro is an assignee of a one-half interest in the patent. Plaintiffs' claim in the case at hand is that certain radio receivers sold by defendant Sears, Roebuck and Company infringe the Molinaro patent.

All proceedings in this case have been stayed since September 15, 1976, pending the outcome of various summary judgment motions in a related case in Federal District Court in Delaware. Defendant Sears now moves for summary judgment on the grounds that plaintiffs are collaterally estopped from asserting this claim for infringement of their patent by the decision in Catanzaro v. Masco Corp., 423 F.Supp. 415 (D.Del.1976), aff'd per curiam sub nom. Catanzaro v. International Telephone and Telegraph, 575 F.2d 1085 (3d Cir.), cert. denied, 439 U.S. 989, 99 S.Ct. 586, 58 L.Ed.2d 662 (1978).¹

Plaintiffs at first interposed only a Rule 56(f)² affidavit in opposition to defendant's papers, alleging their present inability to submit proper affidavits in opposition due to a lack of discovery, particularly on certain devices sold by Sears which were mentioned for the first time in a supplemental affidavit to the papers in support of the motion for summary judgment. However, plaintiffs failed to seek such discovery at any time thereafter during a period of more than 3½ months. Subsequently, plaintiffs sought and received additional time on this motion to take into account a pending decision in Molinaro v. Sonar Radio Corp., 72 Civ. 882 (E.D.N.Y. Oct. 5, 1979). Plaintiff Molinaro³ has, during the time of this extension, prepared an answering affidavit to the motion for summary judgment and submitted a statement of disputed facts in accordance with Local Rule 9(g). Before argument on this motion could be heard, Judge Bartels rendered an opinion in Sonar in favor of defendant, having stopped the trial at the close of plaintiffs' case pursuant to Sonar's motion under Fed.R.Civ.P. 41(b), Sonar, supra.

The dispositive issue on this motion is whether the Molinaro affidavit and statement of disputed facts successfully raise a genuine issue of triable fact or whether the decisions in Masco, Schlumberger, and Sonar, supra, estop plaintiffs from relitigating claims identical to those they have repeatedly lost in other courts. Upon consideration of all the affidavits of the parties and the opinions in the related cases, I find that plaintiffs have not successfully raised a genuine issue that requires a trial for its resolution, but on the contrary, are collaterally estopped from relitigating claims that have been tested, and failed, before.

The starting point of the analysis required in this case is to note that collateral estoppel is fully available in patent litigation. Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971); see also Molinaro and Catanzaro v. Schlumberger, Ltd., 76 Civ. 2583 (S.D.N.Y.1978). The estoppel sought by defendant here is that the opinion in Masco, supra, precludes plaintiffs from even claiming that the scanners sold by Sears are covered by the Molinaro patent.

In Masco, Judge Stapleton defined two distinct types of radio scanners: a "termination of signal" device, which "resumes its tuning upon the termination of the signal being received, as opposed to one which resumes tuning after a predetermined time interval without regard to whether the signal has stayed on the air or not." 423 F.Supp. at 420. Judge Stapleton found that the patent-in-suit covered only the latter type of device, the "time interval device." Defendant Masco was awarded summary judgment on the strength of uncontradicted affidavits that Masco manufactured only "termination of signal" devices, and therefore could not have infringed plaintiffs' patent.

On the present motion, defendant Sears submits an affidavit of Louis A. Schonegg, an electrical engineer, attesting to the fact that the three receivers sold by Sears are "termination of signal" devices, and therefore beyond the scope of the Molinaro patent as defined by Judge Stapleton. A subsequent affidavit of Richard G. Schultz—an employee of defendant—points out that it was discovered that Sears had sold four and not, as originally thought, three models of radio receiver. In a supplemental affidavit, Mr. Schonegg claims to have studied the fourth, recently discovered device, and affirms that it also is a "termination of signal" device. Attached as exhibits to this supplemental affidavit are service and instructional manuals⁴ and a schematic diagram for the newly discovered device.

Defendant argues that this is sufficient grounds for holding that the Sears receivers are "termination of signal" devices and therefore by definition beyond the scope of the patent-in-suit as authoritatively construed in Masco. Plaintiff answers, however, that the Sears receivers contain a "scan delay"⁵ device that in effect converts the Sears receivers into "time interval" devices. Defendant argues that the inclusion of a "scan delay" does not transform a "termination of signal" receiver into a "time interval" receiver, and that three courts have so held.

First, defendant argues, after Judge Stapleton handed down his opinion in Masco, plaintiff Catanzaro requested reconsideration on the exact grounds urged in opposition to summary judgment here—namely, that the "scan delay" feature made the Masco radios "time interval" rather than "termination of signal" devices. The petition for reconsideration was denied on January 6, 1977.⁶

Similarly, after Judge Weinfeld held the plaintiffs' claim in Molinaro v. Schlumberger, 76 Civ. 2583 (S.D.N.Y.1978), collaterally estopped by the decision in Masco, Catanzaro again moved for reconsideration on the basis of the "scan delay" point. Judge Weinfeld also denied that motion in an unpublished memorandum opinion dated January 26, 1979.⁷

Finally, Judge Bartels gave the "scan delay" question its fullest treatment in Molinaro v. Sonar Radio Corp., supra, where that question was the central issue in the case.⁸ In Sonar Judge Bartels wrote of the "scan delay":

Plaintiffs advocate a wooden application of some of the language of Claim 1 without regard to other language in the claim and specification. When properly construed, however, plaintiffs' patent claim does not include the Sonar device. Nor are the Sonar and Molinaro devices equivalent; they do not perform substantially the same function in substantially the same way to produce substantially the same result. Sanitary Refrigerator Co. v. Winters, 280 U.S. 30, 42, 50 S.Ct. 9, 13, 74 L.Ed. 147 (1929); Graver Tank & Mfg. Co. v. Linde Air Products Co., supra. The Sonar receiver automatically stops its scan in response to a received signal and remains tuned to that channel, not for a predetermined short time interval, but for as long as the signal continues to be received. When the signal terminates, scanning resumes after a period of approximately two seconds, unless during that brief time, a signal recurs on that channel. In contrast, Claim 1 of the Molinaro patent describes a time interval device, that is, a device that restarts scanning after a predetermined time interval without regard to whether the signal remains on the air or not. Thus, while carrier delay, as featured in the Sonar device, occurs only after the signal terminates, the Molinaro "predetermined time interval" is the duration of pause on the signal to which the receiver is tuned. The purpose of the Molinaro time interval is to allow the user of the receiver to "sample" the signals or stations broadcast on a frequency range. Thus, while the user of a receiver of the type claimed by the patent-in-suit may, during the time interval, disengage the tuning motor in order to retain a desired signal then being received, the user of Sonar equipment need do nothing to retain a desired channel because the device will not start scanning until the signal has terminated. Thus, the Sonar device does not stop for a short interval on each signal to permit the user to decide whether he desires that signal. Molinaro v. Sonar Radio Corp., 72 Civ. 882 (E.D.N.Y. Oct. 5, 1979), pp. 14-15. (footnote omitted).

Judge Bartels dismissed the action against Sonar at the close of plaintiffs' case and held that the receivers with the "scan delay" feature did not infringe plaintiffs' "time interval" patent.

Based on these previous litigations, it appears clear that defendant's present motion for summary judgment is appropriate and should be granted. Plaintiff Molinaro, however, has offered a statement of disputed facts under Local Rule 9(g), and urges that this raises genuine questions of disputed fact which preclude summary judgment. An examination of plaintiff's claims, however, reveals that almost every one of them is merely the presentation of the "scan delay" argument in another guise, and that those which are not are demonstrably lacking in merit.

1. Molinaro first claims not to be bound by the Masco decision since he was not a party to it. However, by affidavit dated April 16, 1974, Molinaro agreed to, in his own words, "be bound by any Orders or Decisions...