Sperry Rand Corp. v. Bell Telephone Laboratories
| Decision Date | 05 June 1959 |
| Citation | 173 F. Supp. 714 |
| Parties | SPERRY RAND CORPORATION, John Presper Eckert, Jr., and John W. Mauchly, Plaintiffs, v. BELL TELEPHONE LABORATORIES, INCORPORATED, Defendant. |
| Court | U.S. District Court — Southern District of New York |
Byerly, Townsend, Watson & Churchill, New York City, for plaintiffs, C. Blake Townsend, New York City, William D. Hall, Washington, D. C., Joseph B. Forman, Carroll G. Harper, New York City, of counsel.
Henry R. Ashton, New York City, for defendant, Harry R. Pugh, Jr., New York City, of counsel.
This is a motion by plaintiffs to reargue the motion for leave to amend the complaint, which was previously denied by this Court in an opinion dated March 19, 1959. Reargument was granted and oral reargument has been had. Briefs have been submitted and considered. The motion presents no new facts or controlling authorities which were not fully considered by the Court in the determination of the original motion.
Essentially the motion sought to amend the complaint to raise new issues. The Patent Office, having determined the issue of priority under an interference proceeding, awarded priority to Samuel B. Williams, the defendant's assignor, and directed the issuance of a patent to him. Under the statute which gives the Court jurisdiction over this case, a party dissatisfied with the decision "on the question of priority" has a remedy by means of a civil action de novo. 35 U.S.C.A. § 146. The jurisdiction given under the statute would seem to limit the Court to a consideration of the question of priority. By the proposed amendment to the complaint the plaintiffs have sought to raise an issue, not of "priority" of the invention but rather of the "patentability" of the defendant's alleged invention. This issue is sought to be raised by the contention that the disclosures of the defendant were "inoperative" and could not support a patent. This issue was not raised in the proceedings in the Patent Office and for the reasons set forth in its previous opinion the Court is of the opinion that it cannot be raised in this action; the action is limited to the issue of priority.
It may be, of course, that evidence as to operability will have some relevance to the issue of priority. In this sense it may be ancillary to the issue of priority. This, however, is a question of the relevancy of evidence and not of the injection into the case of a new issue. The relevancy of evidence must be determined at the trial, upon consideration of...
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Haraburda v. United States Steel Corporation
...new act. Accordingly, this Court certifies the advisability of an immediate appeal." The case of Sperry Rand Corporation v. Bell Telephone Laboratories, Incorporated, D.C., 173 F.Supp. 714, 715, involved the plaintiff's motion to amend its complaint in a patent case. In denying the motion t......
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EI du PONT de NEMOURS & COMPANY v. Celanese Corporation
...See Footnote 2, supra. Compare Sperry Rand Corp. v. Bell Telephone Laboratories, Inc., 171 F.Supp. 343 (S.D.N.Y.), reargument denied, 173 F. Supp. 714, leave to appeal denied, 272 F.2d 29 (2d Cir. Plaintiff's complaint alleges that the Board of Patent Interferences erroneously awarded prior......
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Sperry Rand Corp. v. Bell Telephone Laboratories, Inc.
...invention. Sperry Rand Corp. v. Bell Telephone Laboratories, Inc., D.C., 171 F.Supp. 343 (1959), motion for re-argument denied, D.C., 173 F.Supp. 714 (1959), leave to appeal denied, 272 F.2d 29 (2d Cir. 1959). The situation is entirely different, however, where the plaintiff is able to esta......
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Montecatini Edison, SPA v. Ziegler
...345, 452 F.2d 1274 (1971), cert. denied, 405 U.S. 990, 92 S.Ct. 1254, 31 L.Ed.2d 456 (1972); Sperry Rand Corp. v. Bell Tel. Laboratories, 173 F. Supp. 714, 715 (S.D.N.Y. 1959), appeal denied, 272 F.2d 29 (2d Cir. 1959). 16 See McFarlane v. Resinite Corp., 273 F. Supp. 224 (N.D.Ill. 1967) (s......