Technograph Printed Circuits, Ltd. v. Methode Electronics, Inc.

• Decision Date: 22 March 1966
• Docket Number: 15021,No. 15020,15023,15024.,15020
• Citation: 356 F.2d 442
• Parties: TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated, Plaintiffs-Appellants, v. METHODE ELECTRONICS, INC., Defendant-Appellee. TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated, Plaintiffs-Appellants, v. GENERAL TELEPHONE & ELECTRONICS CORPORATION and Automatic Electric Company, Defendants-Appellees. TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated, Plaintiffs-Appellants, v. WEBCOR, INCORPORATED, Defendant-Appellee. TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated, Plaintiffs-Appellants, v. CRONAME, INCORPORATED, Defendant-Appellee.
• Court: U.S. Court of Appeals — Seventh Circuit

356 F.2d 442 (1966)

TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated, Plaintiffs-Appellants, v. METHODE ELECTRONICS, INC., Defendant-Appellee.

TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated, Plaintiffs-Appellants, v. GENERAL TELEPHONE & ELECTRONICS CORPORATION and Automatic Electric Company, Defendants-Appellees.

TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated, Plaintiffs-Appellants, v. WEBCOR, INCORPORATED, Defendant-Appellee.

TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated, Plaintiffs-Appellants, v. CRONAME, INCORPORATED, Defendant-Appellee.

Nos. 15020, 15021, 15023, 15024.

United States Court of Appeals Seventh Circuit.

January 7, 1966.

Rehearing Denied March 22, 1966.

Walter J. Blenko, Pittsburgh, Pa., Jerome F. Fallon, Chicago, Ill., Walter J. Blenko, Jr., Paul A. Beck, Pittsburgh, Pa., for plaintiffs-appellants, M. Victor Leventritt, New York City, of counsel.

Theodore W. Anderson, Arthur A. Olson, Victor Myer, Charles M. Carter, Chicago, Ill., for Automatic Electric Co., defendant-appellee.

Lawrence W. Brugman, Warren C. Horton, Chicago, Ill., for Croname, Inc., defendant-appellee.

Watson D. Harbaugh, Evanston, Ill., for Webcor, Inc., defendant-appellee, Harbaugh, Rummler & Snow, Evanston, Ill., of counsel.

Ralph B. Stewart, Washington, D. C., William D. McFarland, Chicago, Ill., Kemon, Palmer, Stewart & Estabrook, Washington, D. C., for Methode Electronics, Inc., defendant-appellee, Spray, Price, Hough & Cushman, Chicago, Ill., of counsel.

Before HASTINGS, Chief Judge, and KNOCH and KILEY, Circuit Judges.

Rehearing Denied in Nos. 15021, 15023 March 22, 1966.

HASTINGS, Chief Judge.

These are parallel cases filed in the United States District Court for the Northern District of Illinois by plaintiffs charging infringement of Eisler patents No. 2,441,960 (No. 960), Reissue No. 24,165 (No. 165) and No. 2,706,697 (No. 697).

The Eisler patents in suit are generally concerned with methods of producing so-called "printed circuits" for use in the manufacture of electronic equipment. For a more detailed description of patent claims, reference is made to the opinion in Technograph Printed Circuits, Ltd. v. Bendix Aviation Corp., D.C., D.Md., 218 F.Supp. 1 (1963).

Plaintiff Technograph Printed Circuits, Ltd., is an English company which holds legal title to the patents in suit by assignments from the inventor, Paul Eisler.

Plaintiff Technograph Printed Electronics, Incorporated, a North Carolina corporation, is the exclusive licensee under said patents with right to license others.

Plaintiff filed six infringement actions in the district court, as follows:

(1) An action against Methode Electronics, Inc., charging infringement of Nos. 960, 165 and 697. (Appeal No. 15020).

(2) An action against Admiral Corporation for infringement of No. 165. This action was settled during proceedings in the district court and is not before us on appeal.

(3) An action against General Telephone & Electronics Corporation and its subsidiary Automatic Electric Company for infringement of Nos. 165 and 697. The action was dismissed as to General Telephone for lack of personal jurisdiction and improper venue. It has continued against Automatic Electric (Appeal No. 15021).

(4) An action against Trav-Ler Industries, Inc., for infringement of No. 165. This action became Appeal No. 15022, but has since been settled and dismissed by stipulation and is no longer before us on appeal.

(5) An action against Webcor, Incorporated for infringement of No. 165. (Appeal No. 15023).

(6) An action against Croname, Incorporated for infringement of Nos. 960, 165 and 697. (Appeal No. 15024).

Each of the remaining above named four defendants filed a motion for summary judgment, which motions were granted by the district court by a minute order, entering judgments in favor of defendants, dismissing plaintiffs' respective complaints at plaintiffs' costs.

Plaintiffs have appealed from the several judgments in Nos. 15020, 15021, 15023 and 15024, respectively.

PLAINTIFFS' OTHER LITIGATION

It appears that prior to the filing of the instant complaints in the district court, plaintiffs had filed about ten other actions charging infringement of the Eisler patents against other than the present defendants in various other jurisdictions of the United States. It also appears that at the time of the consideration of case by the district court plaintiffs had filed numerous additional similar actions against other defendants in other districts.

On May 25, 1959, plaintiffs filed an action against Bendix Aviation Corporation in the United States District Court for the District of Maryland. It charged Bendix with infringement of Nos. 960, 165 and 697.

Bendix answered, denying infringement and alleging invalidity of all three patents (and all their claims) on the grounds, inter alia, of anticipation, obviousness in light of the prior art; and other specific defenses as to certain of the three patents.

Following a prolonged trial, the district court, Honorable R. Dorsey Watkins, presiding, found that certain claims of the Eisler patents were invalid for a number of reasons, including invalidity in view of the prior art, and were not infringed. Judge Watkins published an extended memorandum opinion in support of his decision. Technograph Printed Circuits, Ltd. v. Bendix Aviation Corp., 218 F.Supp. 1-67 (1963).¹

On appeal, the Fourth Circuit affirmed per curiam, 327 F.2d 497 (1964), cert. denied, 379 U.S. 826, 85 S.Ct. 53, 13 L.Ed.2d 36 (1964), stating: "After careful consideration of the record, the arguments and the briefs of counsel, we are persuaded that the patent claims are invalid for obviousness in the light of the prior art for the reasons fully discussed in the opinion of the District Court."

PROCEEDINGS LEADING TO SUMMARY JUDGMENT

After the affirmance of the Bendix case by the Fourth Circuit, plaintiffs moved to consolidate the six cases then pending here in the district court. At the hearing on this motion, the district court, having been previously advised of the decision in the Maryland case, raised the question of the extent to which that decision would be controlling in the pending cases. The trial court was of the fixed opinion that counsel should find some way to test out the question. Counsel for Admiral suggested a motion for summary judgment based on the evidence in the Maryland case. Counsel for Webcor, after consulting with other lawyers present, did not "think a summary judgment at the present time is exactly the four-square way of hitting this thing." He suggested a motion for plaintiffs to show cause why judgment should not be entered against them on invalidity. Plaintiffs objected to summary judgment stating, inter alia, they proposed to put in additional evidence on the question of validity. The trial court put the matter over for two weeks for counsel to act "because I think this produces a ridiculous situation."

Thereafter, at a hearing set for all pending motions, the district court stated: "Well, we are not going to spend much time on this. Somebody has had a full and complete trial in another court, and I don't know why we have to go over the whole matter again. This matter will be continued until some time in September or October, and at that time I think somebody ought to show cause why a motion should not be made here which would dispose of this matter without the necessity of a trial."²

Upon being advised that all defendants either had filed or were ready to file motions for summary judgment, the trial court set a hearing on such motions for a subsequent date. At the subsequent hearing, the case was taken on the papers filed by the respective parties, without oral argument. Twelve days later, summary judgment was granted.

We have set out some of the observations made by the learned trial judge, not by way of criticism, but to show his genuine concern with the state of the record as he found it and what he thought should be done about it. There is little doubt in our minds that he did "think one bite of the cherry ought to be enough" and that the Maryland decision in Bendix settled the matter.

We have carefully examined the four separate motions for summary judgment filed by defendants below, together with the supporting material in each case.

Methode (Appeal No. 15020) asserts (1) the claims of the three patents in suit are invalid for obviousness in light of the prior art for the reasons set out by the Maryland court in Bendix; (2) the claims of No. 165 are invalid for the reason that they are ambiguous, vague and indefinite; (3) the claims of No. 165 are void for double patenting over No. 960; (4) the claims of Nos. 165 and 960 are invalid as covering inoperative procedures; and (5) claim 5 in No. 697 is invalid for the omission of an indispensable step in the claimed process. The grounds are substantially a repetition of the holdings of the district court in Bendix. In addition, Methode filed an index of documentary exhibits on the motion for summary judgment consisting of the disclaimers in Eisler's British patents; no corresponding disclaimers in United States patents; reproduction of prior art patents and publications reflecting 16 United States patents, 6 British patents and one patent each from France, Germany and Russia. Methode also submitted to the trial court a brief containing counsel's summary of the teachings and meaning of the supporting material, including a number of references to the district court's opinion in Bendix.

The other defendants, Croname, Webcor and Automatic Electric generally limited their grounds for summary judgment to claims of invalidity on anticipation and obviousness in light of the prior art for the reasons expressed by the district court in Bendix. Each filed a supporting brief by counsel on the teachings of the...