Sunbeam Corporation v. SW Farber, Inc.

• Decision Date: 19 March 1965
• Citation: 243 F. Supp. 75
• Parties: SUNBEAM CORPORATION, Plaintiff, v. S. W. FARBER, INC., and Hoyt K. Foster, Defendants.
• Court: U.S. District Court — Southern District of New York

243 F. Supp. 75

SUNBEAM CORPORATION, Plaintiff, v. S. W. FARBER, INC., and Hoyt K. Foster, Defendants.

United States District Court S. D. New York.

March 19, 1965.

Gilbert, Segall & Young, New York City, George R. Clark, Walther E. Wyss, Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill., for plaintiff.

Morgan, Finnegan, Durham & Pine, New York City, for defendants.

TENNEY, District Judge.

Defendants S. W. Farber, Inc., and Hoyt K. Foster move herein for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure, contending that there is no dispute between the parties as to any material question of fact. In opposition, plaintiff points to facts which it contends are material to the within action and which are in dispute. Plaintiff's contentions have merit and the motion will accordingly be denied.

This is a civil action by plaintiff, the losing party, in an interference proceeding before the Patent Office brought pursuant to Section 146 of Title 35 of the United States Code (35 U.S.C. § 146 (1954)). The interference was declared on March 14, 1958 and was identified as Interference Proceeding No. 89,155.

The subject matter involved was described by the Examiner as follows:

"Briefly stated, the common invention at issue is a temperature regulating device for controlling an electrically heated appliance, such as a frypan, griddle, etc. The electrically heated appliance is provided with electrical heating means including terminal portions. A body having an elongated cavity defining a temperature sensing zone is provided on the appliance between the aforesaid terminal portions. The detachable temperature regulating device includes a housing having terminals directly engageable with the terminal portions of the heating means and a temperature sensing member projecting from said housing. The sensing member is receivable in said cavity and is of such length that it will enter the temperature sensing zone defined by said cavity at least as soon as engagement is made between the engageable terminals on the appliance and regulator housing. The detachable temperature regulator may be readily removed when the appliance is to be cleaned after use, thereby protecting the sensitive temperature regulating parts from damage by water, grease, etc." (Wyss Affidavit, Exh. 12, at 2.)

On November 30, 1954, defendant Hoyt K. Foster filed an application for Letters Patent in the United States Patent Office for an invention entitled "Electric Cooking Utensil", which application was given Serial No. 471,949. This application was assigned by Foster to S. W. Farber, Inc., Foster also filed on Sept. 22, 1955, an application, Serial No. 535,797, which was assigned to defendant Farber as well.

On April 15, 1955, Ivar Jepson and James E. Hill, plaintiff's assignors, filed an application with the Patent Office for Letters Patent which was given Serial No. 501,652, relating generally "to an electric cooking vessel with built-in heating means and automatic temperature control therefor." (Wyss Affidavit, Exh. 1, at 1.) In addition, four other applications were submitted relating to similar subject matter:

(a) Serial No. 645,846, Cassidy, filed March 13, 1957, and assigned to Pace, Inc., Mansfield, Ohio.

(b) Serial No. 621,411, Sheahan, filed November 9, 1956, and assigned to The A. C. Gilbert Co., New Haven, Connecticut.

(c) Serial No. 607,110, Bletz, filed August 30, 1956, and assigned to Stevens Manufacturing Co., Inc., Cleveland, Ohio.

(d) Serial No. 518,511, Sorenson, filed June 28, 1955, and assigned to National Presto Industries, Inc., Eau Claire, Wisconsin.

On November 19, 1957, the Examiner in the United States Patent Office, in accordance with the provisions of Rule 203 of the Rules of Practice in the United State Patent Office in Patent Cases (hereinafter referred to as "Rules"), contacted the attorneys for the respective parties and suggested to each the identical claim for purpose of interference. This claim read as follows:

"An electrical heating device comprising means to be heated, electrical heating means therefor including electrical terminals, means on said device including an elongated cavity having an opening defining a temperature sensing zone, said cavity being positioned between said terminals, and electrical energy conducting and regulating means detachable from said device, said detachable means including terminals directly engageable with the first said terminals and a temperature sensing projecting member, said member being of such length that it will enter said zone at least as soon as engagement is made between said engageable terminals." (Emphasis added.)

Pursuant to Rule 203(b), this claim was copied into the respective applications of the six aforementioned applicants.

Jepson and Hill added the claim as claim 38 of their application No. 501,652 on November 29, 1957. Foster added the claim to his application No. 535,797 as claim 21 on December 3, 1957, and on the same date the claim was also added to Foster's application No. 471,949 as claim 22. The claim was similarly added to the applications of the remaining four parties.

On March 14, 1958, in accordance with Rules 207 and 209, the Examiner in charge of the six applications mailed an interference notice to the respective parties. This notice officially established Interference No. 89,155.

After notifying the parties concerning the filing of a preliminary statement (Rules 215 and 216), the Examiner contacted them, setting forth the details of all the applications by serial number and filing date (Rules 211 and 226). In addition, this notification set a motion period (Rule 231) to expire November 18, 1958, within which time the parties could bring various motions as provided in Rules 232-236, whereby the interference issues could, if necessary, be more accurately framed.

During said period, several motions were brought by various parties, including: (a) a motion by Foster under Rule 234 to substitute his earlier filed application No. 471,949 for the application No. 535,797 which was involved in the interference, and (b) motions by Foster and others under Rule 233 to add additional counts to Interference No. 89,155 or to set up additional interferences to more fully define the issues between the parties.

Among the motions brought by Foster was a motion under Rule 233 to amend the issue by proposing a number of counts reading as follows:

"A. An electrical heating device comprising means to be heated, electrical heating means therefor including electrical terminals, means on said device including a body having an elongated open-end cavity defining a temperature sensing zone, said body being positioned between said terminals, and electrical energy conducting and regulating means detachable from said device, said detachable means including terminals directly engageable with the first said terminals and a temperature sensing projecting member, said member being of such length that it will enter said zone at least as soon as engagement is made between said engageable terminals." (Emphasis added.)

"B. An electrical heating device comprising means to be heated, electrical heating means therefor including a pair of electric terminals, means in heat conducting relationship to said device including a body having an elongated open end cavity defining a temperature sensing zone, said body being disposed adjacent to said terminals, and electrical energy conducting and regulating unit detachable from said device, said energy conducting and regulating unit having a body part, terminals carried by said body part and directly engageable with the first said terminals, an elongated member extending from said body part and formed of heat conducting material and having a hollow portion of substantial length, a second member within and in engagement with the distal end of the hollow portion of the first said member, said second member extending from the other end of the first said member and into said body part, at least one of said members being responsive to temperature changes to change its dimension, switch means within said body part and mechanically coupled to at least one of said members for opening and closing the switch means in response to said changes, and means electrically interconnecting said switch means with at least one of the first said terminals to control the temperature of said device, the hollow portion of the first said member being of such length that it will enter said zone at least as soon as engagement is made between said engageable terminals." (Emphasis added.)

"C. In an electrically heated vessel having a heat conductive metallic wall, the combination of a metal enclosed resistance heating element in heat transfer contact with said wall and having closely adjacent end portions and parallel terminal prongs by which power is supplied to said element, said terminal prongs extending clear of said vessel, a metallic body receiving heat from said heating element and provided with an elongated heat sensing cavity adjacent to said end portions and parallel with said terminal prongs, and an electrical energy supplying and regulating unit detachable from said vessel, said unit having terminals directly engageable with said terminal prongs, and a temperature sensing projecting member, said member being of such length that it will enter said cavity at least as soon as engagement is made between said terminals." (Emphasis added.)

By a decision rendered on July 31, 1959, the Examiner permitted Foster to substitute application No. 471,949 for No. 535,797. Proposed Count A was added to the Jepson and Hill application No. 501,652 as claim 40, and to the Foster application No. 471,949 as claim 23, and subsequently became the single count in the interference. Proposed Count C was added to the Foster application No. 471,949 as claim 24, and is quite similar to claim 14 of Foster's Patent No. 3,095,498. However, the Examiner declined to...