Riley v. Broadway-Hale Stores

• Decision Date: 16 September 1953
• Docket Number: Civ. No. 12177.
• Citation: 98 USPQ 433,114 F. Supp. 884
• Court: U.S. District Court — Southern District of California
• Parties: RILEY v. BROADWAY-HALE STORES, Inc. et al.

114 F. Supp. 884

98 USPQ 433

RILEY v. BROADWAY-HALE STORES, Inc. et al.

Civ. No. 12177.

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

September 16, 1953.

C. G. Stratton, Los Angeles, Cal., for plaintiff.

Macfarlane, Schaefer & Haun, Henry Schaefer, Jr., E. J. Caldecott, Harris, Kiech, Foster & Harris, Ford Harris, Jr., Warren L. Kern, Los Angeles, Cal., for defendant Broadway-Hale Stores, Inc.

HALL, District Judge.

On pre-trial in this patent case the defendant raised several questions of law. It was agreed between counsel for the plaintiff and defendant that if these questions of law or certain of them were decided in favor of the defendant's contentions, that that would be the end of the lawsuit. The parties stated and briefed the questions of law. Upon studying the briefs it became apparent that counsel for the parties did not take the same view which the Court had of the agreement concerning the disposition of the questions of law. Accordingly, I addressed a communication to both counsel, asking them to reduce their stipulation to writing and file it. In response to that request, the following stipulation was made and filed:

"It is hereby stipulated, by and between the parties hereto, through their respective counsel, that the following issues briefed on pre-trial hearings involve questions of law for determination by the Court from the pleadings, file wrappers and other papers of record:

"Pre-trial

"Issue No.

"1(f) Whether or not the reissue patent in suit No. 23,167 and each of the claims thereof are invalid due to the absence of accident, inadvertence, or mistake warranting the grant of such reissue patent.

"(5) Whether the Patent Act of 1952, and particularly Sections 251 and 252 thereof, applying to reissues, is applicable to the present proceeding.

"(6) Whether or not the added claims, 13 to 20, inclusive, of the reissue patent in suit, or any of them, which were not present in the original patent, cover an invention not disclosed in the original patent (a shoulder pad without the limitation of ribs or voids therein), thereby invalidating the reissue.

"(7) Whether defendant Broadway-Hale Stores, Inc. has the legal right to continue to sell the Gerry Nufoam shoulder pads alleged to infringe claims 13 to 20, inclusive, of the reissue patent in suit by virtue of the fact that said defendant had sold each of such Gerry Nufoam pads prior to the grant of the reissue patent in suit.

"It is further stipulated that each of the above issues 1(f), (6) and (7) constitutes a separately pleaded defense herein, and that a decision against plaintiff's interests on either of the issues 1(f) or (6) would be determinative of the case, while such a decision against plaintiff's interests on the separate defense listed as issue (7) would constitute but a partial determination of the case, since pads other than the Gerry Nufoam pads covered in issue (7) are alleged to infringe herein.

"The parties hereto are in further agreement that issue (5) above listed should be answered in the affirmative, but are in disagreement as to whether, in any event, the Patent Act of 1952 changes the prior law respecting issues 1(f), (6), and (7)."

At the same time the counsel for defendants submitted proposed findings of fact and conclusions of law in accordance with Local Rule No. 3(d)(2). Subsequently I received a letter from plaintiff's counsel which need not be quoted at length which in summary was to the effect that he did not regard the stipulation as being a stipulation for a decision on a motion for summary judgment.

However, from the agreement of the parties made at the pre-trial (copy of the transcript has not been provided) and from the stipulation as submitted, I will proceed to disposition of the matter as though it were a motion for summary judgment.

Issue No. 5, as stated above to be; "whether the Patent Act of 1952 and particularly Sections 251 and 252 thereof 35 U.S.C.A. §§ 251, 252, applying to reissues, is applicable to the present proceedings" requires decision first.

Sections 2 to 5, inclusive, of the Act of July 19, 1952, c. 950, 66 Stat. 792, 814, 815 35 U.S.C.A. prec. § 1, contain provisions for carrying the newly codified Title 35 into effect.¹ Section 4 is divided into eight subsections (a) to (h), inclusive. Section 4(a) provides in part: "This Act shall take effect on January 1, 1953 * * *. It shall apply to unexpired patents granted prior to such date except as otherwise provided". Subdivisions (b) to (h), inclusive, each make specific exceptions of the applicability of certain sections of the 1952 Act. In none of them is any exception made of the applicability of Sections 251 and 252 of Title 35. There is thus no specific exception to the applicability of Sections 251 and 252 to existing patents. Congress having taken the pains to make the seven specific exceptions set forth in subdivisions (b) to (h), inclusive, of Section 4, it is clear that those were the only exceptions intended to be made, unless an exception should specifically appear in any other section. No exception is contained in Section 251 or Section 252.

It is thus just about as clear as legislative language can make it, that Sections 251 and 252 apply to existing patents, i. e., to the patent in suit. The answer to issue numbered (5) of the Stipulation is, yes.

Issues 1(f) and (6) as set forth in the stipulation will be considered together.

It is my opinion that the language of Section 251 of the 1952 Act² does not change the sense or substance or the meaning of its predecessor, former Section 64 of Title 35 U.S.C.A.³ Former Section 64 provided that a reissue could be had for the "same invention" on surrender of the original patent upon error by a claimant "if the error has arisen by inadvertence, accident, or mistake, and without any fraudulent or deceptive intention". The new statute, instead of using that language, provides that upon surrender of the original patent, a reissue may be had "for the invention disclosed in the original patent", whenever a patent "through error without any deceptive intention" is wholly or partly inoperative or invalid.

It seems to me that the word "error" is an overall description of what was covered in the old statute by the words "error arising by inadvertence, accident, or mistake". This would seem to be emphasized by the fact that the 1952 Act added, as new, Section 255, 35 U.S.C.A. § 255, which permits correction of clerical, typographical or minor mistakes, without the necessity of reissue proceedings. These are the kind of mistakes which usually occur through inadvertence or accident. The words "without any deceptive intention" in the 1952 Act appear to mean precisely the same thing as the words "without any fraudulent or deceptive intention" used in the previous Act. The previous Statute required that a reissue must be "for the same invention"; the 1952 Act requires that the reissue patent must be "for the invention disclosed in the original patent". True, different words are used in the latter phrase, but they mean precisely the same thing.

Three things are thus necessary to be determined as to the reissue in suit as posed by issues 1(f) and (6) of the Stipulation: First, was there "error"? Second, if such "error" does appear, did it occur "without any deceptive intention"; Third, if there was "error" and if there was no "deceptive intention", is the reissue patent "for the invention disclosed in the original patent"?

Under the Stipulation, these questions are to be determined from the pleadings, file wrappers, and other papers of record. The file wrappers, of course, include the original patent and the reissue patent.

Each of the seven claims of the original patent No. 2,465,120, as issued, covered a shoulder pad with "voids" or "recesses" variously described. In claim 1, they are called "substantially parallel voids"; in 2, they are referred to as "vertically spaced members"; in 3, "spaced resilient legs"; in 4, "plurality of spaced stiffening ribs"; in 5, the same; in 6, "plurality of widely spaced integral stiffening ribs"; and in 7, "plurality of spaced apart rib members".

The first seven claims of the reissue patent No. RE 23,167 are identical with the first 7 claims of the original patent as issued. Claims 8 to 12, inclusive, also refer to shoulder pads with "voids" or "recesses", variously described. But claims 13 to 16, inclusive, make no reference to a shoulder pad with "voids", "recesses", "ribs", "hollows", "legs", "vertically spaced members", "stiffening ribs", "rib members", or the like.⁴ The ingenuity exercised by patentee's counsel to call the same thing by different names in the other claims shows clearly that claims 13 to 16 claimed and were intended to claim a different invention than that disclosed in claims 1 to 12, inclusive. Claims 17 to 20 of the reissue are nowhere mentioned in the original patent.

The file wrapper of the original patent discloses there were 8 claims. Claims 1, 2, 3 and 8 provided for voids in a resilient rubber shoulder pad; claims 4, 5, 6 and 7 did not. All 8 claims were rejected by the patent office on April 30, 1946. The applicant not only did not appeal from such rejection but on June 22, 1946 specifically through her counsel directed the patent office to "cancel Claims 1 to 7 inclusive". Thereupon claims were added by subsequent proceedings in the patent office, each of which claimed a shoulder pad with voids or recesses, hollows or legs (variously described). The issuance of the original patent with its 7 claims was the result of those proceedings.

In short, the original application and claims called for a shoulder pad of resilient material with voids, and without voids. The applicant voluntarily abandoned the claims which covered a shoulder pad without voids, and sought and secured a patent covering a shoulder pad with voids only. Thereafter, on reissue proceedings the original patent was surrendered...