Riley v. Broadway-Hale Stores

• Decision Date: 07 December 1954
• Docket Number: No. 14210.,14210.
• Citation: 217 F.2d 530
• Parties: Ruth E. RILEY, Appellant, v. BROADWAY-HALE STORES, Inc., a corporation (formerly Broadway Department Store, Inc., a corporation), Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

217 F.2d 530 (1954)

Ruth E. RILEY, Appellant, v. BROADWAY-HALE STORES, Inc., a corporation (formerly Broadway Department Store, Inc., a corporation), Appellee.

No. 14210.

United States Court of Appeals Ninth Circuit.

December 7, 1954.

Allan M. Shapiro, Los Angeles, Cal., for appellant.

MacFarlane, Schaefer & Haun, Henry J. Schaefer, Jr., E. J. Caldecott, Harris, Kiech, Foster & Harris, Warren L. Kern, Ford W. Harris, Jr., Los Angeles, Cal., for appellee.

Before HEALY, POPE, and CHAMBERS, Circuit Judges.

HEALY, Circuit Judge.

This is an appeal from a summary judgment dismissing appellant's suit for patent infringement, and from a judgment coincidentally entered on appellee's counterclaim declaring the patent to be void.

The subject matter of the suit is appellant's reissue patent No. 23,167. Her original patent No. 2,465,120 was issued March 22, 1949. It related to foam rubber shoulder pads with recesses of various types generally termed "voids." The reissue in suit, obtained November 15, 1949, added shoulder pads without voids in Claims 13-16, 18 and 20. Claims for shoulder pads without voids had been made in the application for the original patent, but during the course of the proceedings in the Patent Office had been deliberately and voluntarily abandoned.

In pre-trial proceedings the parties stipulated that certain formulated issues were questions of law to be determined by the court from the pleadings, file wrappers, and other papers of record. One of these was "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."¹ Another was "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." It was further stipulated that a decision against appellant's interests on either of these issues would determine the case. These points were fully argued. The district court proceeded to decision as though a motion for summary judgment was before it and determined both issues in appellee's favor, 114 F.Supp. 884. Appellant complains of this procedure, but we are satisfied that she was not prejudiced thereby.

The courts have uniformly held that a reissue patent is void if the matter claimed in the reissue was intentionally omitted or abandoned by the patentee during the course of his application for the original patent, that is to say, in such situation no error through inadvertence, accident, or mistake can be said to exist. Altoona Publix Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 492, 55 S.Ct. 455, 79 L.Ed. 1005; Dobson v. Lees, 137 U.S. 258, 265, 11 S.Ct. 71, 34 L.Ed. 652; Yale Lock Mfg. Co. v. Berkshire Nat. Bank, 135 U.S. 342, 379, 10 S. Ct. 884, 34 L.Ed. 168; Maulsby v. Minneapolis Casket Co., 8 Cir., 84 F.2d 107, 110; Union Switch & Signal Co. v. Louisville Frog, etc., Co., 6 Cir., 73 F.2d 550, 552; Grand Rapids Show Case Co. v. Baker, 6 Cir., 216 F. 341, 351; Crosley Corp. v. Westinghouse Electric & Mfg. Co., D.C., 52 F.Supp. 884, 900, affirmed in part and reversed in part on other grounds 3 Cir., 152 F.2d 895. The present case belongs in that category. The original application included claims for shoulder pads without voids. All of the original claims were rejected by the Patent Office. The claims to pads without voids were abandoned, but those for shoulder pads with voids were prosecuted. Eventually appellant accepted a patent limited to shoulder pads with voids, and thereupon obtained the reissue primarily for the purpose of covering the very element deliberately abandoned.

Appellant says that her reissue is not within the general rule mentioned for the reason that the abandoned claims differed materially from the reissue claims, relying on the decision of this court in National Nut Co. v. Sontag Chain Stores Co....