Mueller Brass Co. v. Reading Industries, Inc.

• Decision Date: 21 December 1972
• Docket Number: Civ. A. No. 68-1996.
• Citation: 352 F. Supp. 1357
• Parties: MUELLER BRASS CO. v. READING INDUSTRIES, INC.
• Court: U.S. District Court — Eastern District of Pennsylvania

352 F. Supp. 1357

MUELLER BRASS CO. v. READING INDUSTRIES, INC.

Civ. A. No. 68-1996.

United States District Court, E. D. Pennsylvania.

December 21, 1972.

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Don K. Harness, Richard E. Dibner, Harness, Dickey & Pierce, Detroit, Mich., for plaintiff.

Arthur H. Seidel, William W. Schwarze, Seidel, Gonda & Goldhammer, Philadelphia, Pa., for defendant.

OPINION AND ORDER

NEWCOMER, District Judge.

This patent infringement action was instituted by Mueller Brass Co., a Michigan Corporation. Mueller Brass is the record owner of U. S. Letters Patent No. 3,247,747, originally issued to John Fueslein, et al. September 27, 1966. The defendant is Reading Industries, a Delaware Corporation with offices and manufacturing facilities in Reading, Pennsylvania where the alleged infringements occurred. The case is therefore properly before the Court under 28 U. S.C. § 1338, and venue is proper under 28 U.S.C. § 1400.

This action was originally brought alleging infringement of all four claims of the patent in suit. Defendant, Reading, counterclaimed for a declaratory judgment under 28 U.S.C. § 2201 that all four claims are invalid, and also counterclaimed for treble damages under Section 4 of the Clayton Act (15 U.S.C. § 15) alleging a violation of Section 2 of the Sherman Act (15 U.S.C. § 2). In February of 1970, Mueller Brass attempted to limit its action to claims 3 and 4, a limitation in which Reading has never acquiesced.

The counterclaim for declaratory judgment was proper, and served to hold the validity of all four claims in issue. Altvater v. Freeman, 319 U.S. 359, 63 S.Ct. 1115, 87 L.Ed. 1450 (1949). Having been sued on claims 1 and 2 initially, defendant need not wait to be sued again. Because of this, it is unnecessary to decide if dropping two of four patent claims is the dismissal of an action requiring agreement of both parties under Federal Rule Civ.Proc. 41(a).

SCOPE OF THE PATENT

The first step in deciding a patent case is to decide the scope of the patent in suit. The patent law has its own jurisprudence and rules of construction, and like other areas of the law, there are major lines of decisions which have given rise to principles which appear, on the surface, at any rate, to be contradictory. Thus, some cases hold that patents are to be liberally construed in favor of the validity of the patent, that patentees are allowed much latitude in their language, that the specification should be resorted to in cases of ambiguity to interpret the meaning of the language of the claims, and even that the wording of the claims may be rendered ambiguous by a difference between the language of the claims and the supporting drawings, an ambiguity which should be resolved to uphold the patent. This general line of thought is typified by the statement that a patent ought not to be defeated by "technical adherence to the letter of the statute, or by the application of artificial rules of interpretation." Topliff v. Topliff, 145 U.S. 156, 172, 12 S.Ct. 825, 831, 36 L. Ed. 658 (1891). See generally Strong-Scott Manufacturing Co. v. Weller, 112 F.2d 389 (8th Cir. 1940) and Deller's Walker on Patents, 2d Ed., § 226.

Another line of cases takes a hard line against resort to the specification of a patent either to expand a claim to cover accused activity or to contract it to avoid prior art. The progenitor of this line may be taken to be White v. Dunbar, 119 U.S. 47, 51-52, 7 S.Ct. 72, 74, 30 L.Ed. 303:

"Some persons seem to suppose that a claim in a patent is like a nose of wax, which may be turned and twisted in any direction, by merely referring to the specification, so as to make it include something more than, or something different from, what its words express. The context may, undoubtedly, be resorted to, and often is resorted to, for the purpose of better understanding the meaning of the claim; but not for the purpose of changing it and making it different from what it is. The claim is a statutory requirement, prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the public, as well as an evasion of the law, to construe it in a manner different from the plain import of its terms. This has been so often expressed in the opinions of this court that it is unnecessary to pursue the subject further."

The quoted language is not without its problems, however, in that it is often difficult to tell the difference between resorting to a claim to better understand a term from its context, and changing the meaning of the word. Many of the cases resorting to the specification came after White v. Dunbar and merely resorted to the context of the specification to conclude that an ordinary English word meant something other than its apparent English meaning. The problem with ambiguity as a standard for resort to the specification is that virtually all language has some degree of ambiguity.

The growth of the hard line rationale is typified by the following quote from In re Levy, 55 App.D.C. 137, 2 F.2d 939, a 1924 case of the Circuit Court for the District of Columbia sitting on an appeal from a patent office rejection of a patent application:

"The party who states his claims before the Patent Office in broad language is not in a position, when thrown into interference, to read limitations into them. The reason is obvious. If he has asked too much, he may reform his claims in an appropriate proceeding. When he takes claims broader than his invention, however, he thereby is enabled unduly to harass the public."

To the same effect: Nichols v. 3M Co., 109 F.2d 162 (4th Cir. 1940), In re Henschell, 90 F.2d 357 (Cust. & Pat. App., 1937), In re Kuhrts, 95 F.2d 325, 25 C.C.P.A., Patents, 1043 (1937), and In re Gillis, 102 F.2d 902 (Cust. & Pat. App., 1939).

To be sure, the early development of the hard line was in cases involving the denial of appeals from Patent Office rejection and there are different considerations involved in an appeal from the denial of a patent and in determining the scope of an issued patent, but in 1948 the Supreme Court adopted the hard line in the latter circumstance in Graver Tank & Manufacturing Co. v. Linde Air Prod. Co., 336 U.S. 271, 69 S.Ct. 535, 93 L.Ed. 672, where Mr. Justice Jackson wrote for a unanimous Court:

"The difference between the District Court and the Court of Appeals as to these findings comes to this: The trial court looked at claims 24 and 26 alone and declined to interpret the terms `silicates' and `metallic silicates' therein as being limited or qualified by specifications to mean only the nine metallic silicates which had been proved operative. The District Court considered that the claims therefore were too broad and comprehended more than the invention. The Court of Appeals considered that because there was nothing in the record to show that the applicants for the patent intended by these claims to assert a monopoly broader than nine metallic silicates named in the specifications, the court should have construed the claims as thus narrowed and limited by the specifications. . . . We have frequently held that it is the claim which measures the grant to the patentee. (citations omitted) While the cases more often have dealt with efforts to resort to specifications to expand claims, it is clear that the latter fail equally to perform their function as a measure of the grant when they overclaim the invention. When they do so to the point of invalidity and are free from ambiguity which might justify resort to the specifications, we agree with the District Court that they are not to be saved because the latter are less inclusive. (citations omitted)" Id., at 276-277, 69 S.Ct. at 538.

While it is true that the Court in Graver Tank was dealing with an attempt to resort to the specification to avoid invalidity for failure to particularly claim the invention in question, it is clear that the same principles apply when the attempted resort to the specification is for the purpose of avoiding the prior art. As Judge Learned Hand said in Foxboro Co. v. Taylor Instruments Co., 157 F.2d 226 (2d Cir., 1946):

"We should have no warrant for limiting the claims by the elements of the disclosure which they do not include, even if the elements were new. A patentee who claims broadly must prove broadly; he may not claim broadly, and recede as he later finds that the art unknown to him has limited his invention. That is the chance he must take in making broad claims;" Id., at 232.

Graver Tank does not really over-rule previous cases resorting to specifications to contract claims, but it does imply that a more severe standard of linguistic ambiguity must be applied than previous Courts had done in the past.

A Court should consider how ambiguous the claimed ambiguity really is, and how difficult a task it would have been to make the claim read literally what it is urged to mean by reference to the specification. People who draw patents sometimes yield to the temptation to claim broadly, with a ready retreat to the narrowness of the specification planned if the patent comes under heavy attack. Their escape hatch is a word claimed to be ambiguous. If the ambiguity could have been avoided with reasonable ease initially, such bet-hedging should not be allowed, and the Court should give the word in question in the claim its normal English meaning unlimited by the narrow language of the specification.

It is with these considerations in mind that we turn to an examination of the claims of the patent in suit. They are short enough to be conveniently reproduced here in their entirety and they claims as follows:

1. A method for maintaining the interior of tubular members devoid of contamination and deposits for prolonged periods of time which comprises the steps of cleaning the interior of the members to remove undesirable deposits from the inner surfaces thereof, purging

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