Roberts v. SEARS, ROEBUCK & CO.
| Decision Date | 20 July 1987 |
| Docket Number | No. 80-5986.,80-5986. |
| Citation | 665 F. Supp. 671 |
| Court | U.S. District Court — Northern District of Illinois |
| Parties | Peter M. ROBERTS, Plaintiff, v. SEARS, ROEBUCK & CO., Defendant. |
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John B. Davidson, Keith L. Davidson, Louis G. Davidson & Assoc., Chicago, Ill., for plaintiff.
James G. Hunter, Jr., Melissa A. Apcel, & Charles S. Treat of Latham & Watkins, Chicago, Ill., for defendant.
This patent infringement action is before this court for an appellate-style review of six grounds which the defendant believes led to an infirm verdict following the original trial of this case. For the following reasons, the court finds that none of these arguments has merit.
The device at issue here is a quick-release socket wrench upon which plaintiff Peter Roberts obtained a patent in 1965. To a layperson, the principal difference between a conventional socket wrench and the quick-release socket wrench is that two hands are needed to remove a socket from the conventional wrench and replace it with a socket of a different size, while Roberts' device provides a means for releasing a socket and engaging another in a one-handed operation. The Seventh Circuit described the Roberts quick-release wrench in its most recent opinion in this case:
Shown below in Figure 1 is a conventional socket wrench. It consists of a handle (3) and a detachable socket (2). The pushbutton (1) on the head of the wrench corresponds with the pushbutton (also 1) on Roberts' quick-release mechanism shown below in Figure 2.... Although the Roberts quick-release mechanism retains the ball-type detent (4) utilized in the conventional wrench, in place of a spring directly behind the ball, Roberts uses a springloaded pin (5) that moves in the center of the stud (6). The pin contains a specially-shaped camming recess (7). "Selective alignment," a key feature of the Roberts device, refers to the type of ball and pin positioning that results from the "camming action" between the sloped recess of the pin and the curved surface of the ball. In the socket retaining position, small longitudinal movements of the pin result in changes of position of the ball with respect to the pin; the ball and pin can assume one of an infinite number of positions relative to one another depending upon the depth of the socket dimple. The ball will be cammed outward only as far as is necessary to engage the socket dimple. This "selective alignment" feature is claimed to offer unique advantages: it results in a smooth, reliable quick-release operation; it allows use of sockets with various dimple depths; it automatically compensates for socket wear; it prevents "hang up" of the ball detent; and it allows for one-handed operation in both removing and replacing sockets. To release the socket, the pushbutton (1) is depressed, moving the pin to the position where the ball can begin to move along the sloped recess of the pin. Once the ball is in the recess, the socket can fall of its own weight. With the pushbutton still depressed, a new socket may be slipped on and securely retained by releasing the pushbutton, all in one-handed operation.
Roberts v. Sears, Roebuck & Co., 723 F.2d 1324, 1336 (7th Cir.1983). As the Seventh Circuit stated, it is "easier to use the wrench than it is to understand what makes it easier to use." Id.
Roberts filed suit against Sears, alleging that the latter's sale of Roberts-type wrenches after January 1977 and its sale of Orszulak wrenches beginning in 1980 infringed his patent. Following a trial before Judge Bua, Roberts won a substantial jury verdict. The Seventh Circuit, sitting en banc, reversed and remanded for a new trial, holding that the trial court improperly allowed the jury to determine whether the patent was invalid. Roberts, 723 F.2d at 1343. In particular, the Seventh Circuit found that the trial court improperly required the jury to decide the legal questions of the scope of the Roberts patent claim and whether the device was obvious. Id. at 1338, 1339. On remand, the case was assigned to Judge Decker. The plaintiff moved Judge Decker to reinstate the jury verdict, arguing that the Seventh Circuit's decision on the obviousness issue conflicted with decisions from the Federal Circuit, which would hear any further appeals in this action. Judge Decker denied the motion, holding that he was bound by the Seventh Circuit's mandate.
The plaintiff then petitioned the Federal Circuit for a writ of mandamus ordering the district court to enforce the jury verdict. The Federal Circuit, reasoning that the obviousness question would be moot if other grounds, raised by the defendant on appeal but not reached by the Seventh Circuit, also warranted reversal, denied the petition "to allow the district court to review these other grounds." Judge Decker understood the Federal Circuit to intend a review of those issues in the context of a new trial, since an appellate-style review of the issues not reached by the Seventh Circuit, "conducted without regard for or in relation to the district court's trial function, was unheard of in his experience." This prompted the plaintiff to again seek mandamus from the Federal Circuit, this time on the ground that Judge Decker was refusing to comply with the Federal Circuit's order. The Federal Circuit agreed and ordered the district court to determine whether a new trial was necessary on any of the grounds raised by the defendant but not decided by the Seventh Circuit. The case is now before this court for that purpose. Although I agree with Judge Decker that an appellate-style review of rulings of another judge on this court is unheard of, I am bound by the Federal Circuit's mandate to conduct just such a review.
The defendant has raised six grounds, in addition to those addressed by the Seventh Circuit, which it believes warrant reversal of the jury verdict. These grounds relate to the exclusion of Wilson as prior art, the invalidity of the patent as shown by prosecution history, the construction of the plaintiff's claim, the finding of infringement, references during the trial to a prior finding that the defendant committed fraud, and the finding of willful infringement. These grounds will be addressed seriatim.
First, the defendant argues that the trial court erred by striking a defense raised under 35 U.S.C. § 102(g) based on a prior invention of Harold H. Wilson. Wilson applied for a patent on a socket wrench on Septemer 9, 1963; his application was still pending when Roberts filed his application on April 24, 1964. On October 13, 1964, the Patent Office rejected Wilson's application as anticipated by the 1928 Carpenter patent. Wilson did not pursue his application further.
Section 102(g) provides:
This section embodies the principle that to be entitled to a patent, the applicant must be the first to have made the invention. In re Katz, 687 F.2d 450, 454 (C.C.P.A.1982). However, prior conception alone does not defeat patentability; the invention must also be "reduced to practice." Id.
An invention may be reduced to practice by actually embodying the invention into a practical form, and this is technically termed an "actual reduction to practice." The other way to reduce an invention to practice is by filing an application for patent thereon, which is termed a "constructive reduction to practice." The invention is not completed until there has been actual or constructive reduction to practice.
All States Plastic Mfg. Co. v. Weckesser Co., 362 F.Supp. 94, 97 (N.D.Ill.1973), aff'd, 506 F.2d 465 (7th Cir.1974); Popeil Bros., Inc. v. Schick Elec., Inc., 356 F.Supp. 240, 244 (N.D.Ill.1972), aff'd, 494 F.2d 162 (7th Cir.1974). Thus, Wilson's invention was constructively reduced to practice when he filed his patent application on September 9, 1963. The invention was apparently never actually reduced to practice; there is no evidence that Wilson ever built his wrench.
The plaintiff contends that constructive reduction to practice is effective only in interference actions under 35 U.S.C. § 135 and that only actual reduction to practice establishes priority or possession of the invention where patentability is at issue. This contention must be rejected, given the numerous cases in which constructive reduction was applied where patentability was at issue. See, e.g., In re Katz, 687 F.2d 450 (C.C.P.A.1982); Allen v. W.H. Brady Co., 508 F.2d 64 (7th Cir.1974); Bepex Corp. v. Black Clawson Co., 208 U.S.P.Q. 109 (S.D. Ohio), aff'd, 713 F.2d 202 (6th Cir.1983); see also Leesona Corp. v. Varta Batteries, Inc., 522 F.Supp. 1304, 1338-39 (S.D.N.Y.1981).
In re Costello, 717 F.2d 1346, 1350 (Fed. Cir.1983).
Sears believes that the timing of the abandonment is critical. Relying on the Seventh Circuit's decision in Allen v. W.H. Brady Co., 508 F.2d 64 (7th Cir.1974), it argues that although Wilson ultimately abandoned his application, Wilson constitutes prior art was against Roberts, because the...
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