Technograph Printed Cir. v. Packard Bell Electronics Corp.

• Court: U.S. District Court — Central District of California
• Writing for the Court: Harris, Kiech, Russell & Kern, Los Angeles, Cal., for defendant Beckman
• Citation: Technograph Printed Cir. v. Packard Bell Electronics Corp., 290 F.Supp. 308 (C.D. Cal. 1968)
• Decision Date: 08 August 1968
• Docket Number: 63-86-PH,63-76-PH,63-85-PH,63-14-PH,66-1995-PH (2840-SD-K) and 66-1996-PH (2844-SD-K).,66-1992-PH (2836-SD-K),66-1993-PH (2837-SD-K),63-109-PH,63-48-PH,No. 62-1256-PH,66-1994-PH (2839-SD-K),63-108-PH,62-1256-PH
• Parties: TECHNOGRAPH PRINTED CIRCUITS, LTD., et al., Plaintiffs, v. PACKARD BELL ELECTRONICS CORP. et al., Defendants.

290 F. Supp. 308

TECHNOGRAPH PRINTED CIRCUITS, LTD., et al., Plaintiffs, v. PACKARD BELL ELECTRONICS CORP. et al., Defendants.

Nos. 62-1256-PH, 63-14-PH, 63-48-PH, 63-76-PH, 63-85-PH, 63-86-PH, 63-108-PH, 63-109-PH, 66-1993-PH (2837-SD-K), 66-1992-PH (2836-SD-K), 66-1994-PH (2839-SD-K), 66-1995-PH (2840-SD-K) and 66-1996-PH (2844-SD-K).

United States District Court C. D. California.

August 8, 1968.

COPYRIGHT MATERIAL OMITTED

Whann & McManigal, Los Angeles, Cal., for plaintiff Technograph.

Smyth, Roston & Pavitt, Los Angeles, Cal., for defendants Packard-Bell, Northrop and Daystrom.

Harris, Kiech, Russell & Kern, Los Angeles, Cal., for defendant Beckman.

Mellin, Hursh, Moore & Weissenberger, San Francisco, Cal., for defendant Lockheed.

Spensley, Horn & Jubas, Los Angeles, Cal., for Electronic Specialty.

Huebner & Worrel, Los Angeles, Cal., for Bureau of Engraving.

Fulwider, Patton, Rieber, Lee & Utecht, Los Angeles, Cal., for Electronic Engineering.

Merrill L. Robertson, San Diego, Cal., for Ryan Aeronautical.

Woolley, Collins & Ward, La Jolla, Cal., for Non-Linear Systems.

Thomas Moran and Wm. Bruner, San Diego, Cal., for Cubic Corp.

Carl R. Brown, San Diego, Cal., for Electralab Electronics.

MEMORANDUM OPINION

HALL, District Judge.

1. The above 13 of 15 patent cases were filed in what, at the time of filing, was either the Central Division, or the Southern Division, of the then Southern District of California, in late 1962 and early 1963. Appropriate orders have been made transferring them so that they are all now consolidated, on the issue of validity only, and pending in what is now the Central District of California at Los Angeles, before the undersigned Judge.¹

They are part of the more than 70 cases filed by the same plaintiffs in 17 different districts located in 7 Circuits throughout the United States which involve one or more of the same three patents in issue in some, or all, of the 15 cases pending here.

2. The cases in Los Angeles were originally assigned to the calendar of Judge Yankwich in this Court, but when he became ill in 1963 the undersigned as the then Chief Judge called them on Judge Yankwich's calendar and they, as well as the cases originally filed in San Diego, were, ultimately, on October 21, 1964, transferred to the regular calendar of the undersigned for all further proceedings.

3. The matter immediately before the Court is defendant Lockheed's motion for the imposition of sanctions, under F.R. Civ.P. 37, in Case 63-48, joined in by all of the defendants in the other cases in the caption. The sanctions sought are against plaintiffs and are in the alternative (1) to hold the plaintiffs in contempt, (2) to strike the response of the plaintiffs to an Order of the Court for production and hold the produced material inadmissible, or (3) in the alternative to dismiss the actions. The bases for seeking the sanctions are the failures of plaintiffs to comply with the Court's Orders directing plaintiffs to make discovery in connection with defendant Lockheed's motion for summary judgment, joined in by all the other defendants.

4. Due to the great number of lawsuits pending in different Districts involving these same patents, resulting in a monumental proliferation of documents, innumerable motions here, Maryland, Chicago and elsewhere, and several opinions of different United States Courts of Appeals, as well as the nature and severity of the sanctions sought, it is necessary to state in brief outline a history of the litigation concerning these patents.

5. The patents involved are:

(1) Reissue 24,165 (expired, February 2, 1963)

(2) 2,441,960 (expired, May 25, 1965)

(3) 2,706,697 (application dated December 17, 1951)

All the cases here involve No. 24,165. Seven involve all three patents.

Five involve No. 2,706,697 in addition to No. 24,165.

Three involve No. 24,165 only.

Twelve involve No. 2,706,697, and one or both of the others.

6. One person, known as Eisler, was the original applicant. He filed an application in England some twenty-five years ago, viz.: on February 2, 1943; and on February 3, 1944, he filed an identical application, No. 520,991, in the United States, which issued as patent No. 2,441,960 on May 25, 1948. It expired in 1965. On February 27, 1948 a divisional application was carved out of the original application 520,991, which divisional application took the number 11,798, out of which patent No. 2,257,568 issued on February 26, 1952, and was subsequently reissued as Reissue No. 24,165, which under Section 10 of the Boykin Act (60 Stat. 940, at 944) expired February 2, 1963, twenty years after filing the first application on February 2, 1943 in Great Britain. Divisional Application 11,798 was further divided on December 17, 1951 by Application 261,989, which resulted in the issuance of Patent No. 2,706,697 on April 15, 1955. Thus, according to plaintiffs,² all three patents "stem" from the original British Application on February 2, 1943 and its American duplicate of February 3, 1944, No. 520,991, resulting in now expired patent No. 2,441,960.

7. In view of the fact that the determination of the motions requires an inquiry into the bona fides of counsel, it is important to note that Walter J. Blenko and his firm in Pittsburgh, Pennsylvania, are the actual counsel for the plaintiffs in all the litigation, appearing by special permission in this litigation, although local counsel appears on the pleadings. Upon inquiry from this Court of local counsel here as to whether or not he was the author of a certain document in the files, he replied that he was "not the author of anything" filed in the cases here.

8. In passing, it is also noted (though not of controlling significance) that the plaintiff's ("Technograph, Inc.," organized in 1951) "sole business is the sublicensing of these patents and the supplying of technical `know-how' in the etched foil technique; it does no manufacturing itself."³ It maintains a litigation fund of a sizeable amount. Its employees are limited to the executives and several stenographers.

9. Of the many cases filed throughout the Country, the first case coming to trial involved all three patents. It was filed in the District of Maryland on May 25, 1959 by the plaintiffs herein against the Bendix Corporation. The case was on trial before the Honorable Dorsey Watkins from October 2, 1961 through December 7, 1961. There were two days of argument and 600 pages of briefs. It was submitted on February 2, 1962. More than 1,000 exhibits were introduced. The transcript covers over 4,000 pages. On May 27, 1963 Judge Watkins filed a long opinion exhaustively analyzing contentions of the parties and held all three patents invalid on several grounds (Technograph Printed Circuits, Ltd. v. Bendix Aviation Corp., D.C., 218 F.Supp. 1 to 67). Without reaching any of the other things covered by Judge Watkins' opinion, the Fourth Circuit affirmed the District Court on the ground of obviousness on January 17, 1964 (327 F.2d 497), and certiorari was denied on October 12, 1964 (379 U.S. 826, 85 S.Ct. 53, 13 L.Ed.2d 36).

10. While only a limited number of claims in each of the three patents were "declared on" in the Maryland case, and a more limited number were used as "example" claims, the District Court of Maryland had to, and did, examine the entire history of all the applications, and the various claims made in them, the additions and amendments thereto, and the entire history of all three patents in the Patent Office, as well as the prior art. The scope of his opinion is indicated by the comment at 218 F.Supp., p. 24, where it is stated:

"When the available literature, both patents and publications, not cited, is considered, and also the ability of persons unaware of the alleged inventions to reach the same results by the same means, the court has no hesitation in holding the patents, and the claims in suit, to be invalid."

italics supplied And at page 31:

"The court holds that the Stevens and Dallas application—not considered by the Examiner—of itself invalidates the Eisler patents, either as an anticipation, or showing lack of novelty." italics supplied

11. One gets the impression from reading the opinion and examining the files and records, including the pre-trial Orders in the Maryland case, that it was to be a "test" case and that the "example" claims were to stand as "example" claims for all the claims. Moreover, on February 26, 1963, while the case was still under submission in Maryland, the plaintiffs filed a Memorandum in this Court which stated, among other things, that it had "prosecuted the Bendix case diligently," and that a test case was filed against Bendix in the United States District Court for the District of Maryland on May 25, 1959, for infringement of the three patents in suit here. "The Bendix case is avowedly plaintiffs' test case." italics supplied These statements of plaintiffs' counsel, the exhaustive record, and the long and meticulous opinion of Judge Watkins, dispel any question but that the Maryland case was tried diligently, was considered thoroughly and exhaustively by the trial court, that the plaintiffs had their "days in court," and suggest to the thoughtful reader that if there was anything else in favor of validity concerning any claim in any of the patents in addition to what the plaintiffs produced, counsel would have done so.

12. The cases in the Northern District of Illinois at Chicago proceeded to the point where this Court was advised in late 1963 they would shortly go to trial, and after hearing from all of the parties, this Court made an Order on December 3, 1963 staying all further proceedings in the cases in this Court until further order of this Court because of the imminence of the trial in Chicago. The cases in Chicago proceeded on a motion for summary judgment which was granted on or about December 30, 1964. It was appealed to the United States Court of Appeals for the Seventh...