Petition for Writ of Certiorari — Stukenborg v. Teledyne, Inc.

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JUL 10 1971 Hy

E. ROBERT. SEAVER, CLERK

Supreme Court ft the Unite States

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| ci ines siete

No. | “1 64 -

LOUIS C. STUKENBORG, HAROLD V. UTTERBACK |

and ASSOCIATED AIRCRAFT INDUSTRIES,

Petitioners, j

v. at

TELEDYNE, INC., ane

Sa, Respondent... ©

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS ©

FOR THE NINTH CIRCUIT.

JoHN J. McALEEsE, JR.,

12 South 12th Street,

Philadelphia, Pa. 19107,

Attorney for Petitioners.

Of Counsel:

ALFRED C. AvuRICH,

3300 Tice Creek Drive No. 8,

Walnut Creek, California 94595.

International, 711 So. 50th St., Phila., Pa.°19143—Tel. SA 7-8711. Area: Code 215

“INDEX.

Rerorts oF Opinions BELow .......... Cateauceeys Mieehee :

¥

EE EAT See hn eee Pe Sunes eua hake

COUMSTIONS PRESENTED 20.0 ecccececceccveces eVrTerrirrn

, POMEMENE OP TU CARR sicspivteccccensedsessoncvaases

ARGUMENT s Pea tamale yeas duce heu en ven kewnaihense ck

(i) Important Question of Federal Patent Law ........

(ii) Failure to Adhere to Mandate of Graham v. John

Deere Company :.........4+: sevcececcs Stee

(iii) Failure to Give Any: Effect to the Presumption’ of

WER cdc cnnesesisnuess6a0es at Sea u ede ie

ConcLusion NE OPE ene Sebandinehewca swede’ ean

APPENDIX :

i NE IN ooh cca vcc cane sens sneense

' Circuit Court Judgshent éebussaseusaens Peach uaeses

_ District Court Decision ..............csececsecscccees

,

TABLE OF CITATIONS. .

Cases: } ’ "Page

- Bassick Manufacturing Co. v. R.. M. ‘Hollingshead, 208" U.S.

415, 56S. Ct. 787, 80-L. Ed. 1251 CU sav ciasackes 2,8, 9°

_ Blonder-Tongue Laboratories, Inc. v. University of Illinois

"Found, 91 S.Ct, 1494.,(1971) 2.22.05 +o ae 0, & 5, 6, 7,9, 10

Graham v. John Deere Company of Kansas City, 383 U. S. 1,

86 S. Ct. 684 (1966) ..... (ELiig cane eames Lae soe

Lincoln Engineering Co. of Del. v. Stewart-Warner Corp., 303

U. S. 545, 58 S. Ct. 662, 82 L. Ed. 1008 (1938) ........ 9

Stukenborg v. United States, 372 F. 2d 498 (Ct. Cl. 1967) . l

‘Triplett v. Lowell, 297 U, S. 638, 56 S. Ct. 645, 80 L. Ed.

949 (1937) -......06. PP Oe POP Pa et Aeee ey Spay 6

United States v. Jefferson Electric Mfg. Co., 291.U. S. 386

PRED av daunccdeas Coaes sek eee neon een eneeeeees 5

Code:

35 U. S.C. §271(b) and (c) ...... eerie ads eas 3

aU. S.C. § 15): ...35..% CAEL ARAEEEAST RETO RETRO ars I

28 U.S. C. § 1331 and 1338(a) ........0,.. eee eee eee eee - <

he ok e | eereerere rer rer ry eer errr eres 8

ee Es erst cee eae econ eee ae

‘Rules: ; ) |

Fed. R. Civ. P. 56........-; Jeet eer oe eee oe oats re+2 “5,9

e

PETITION FOR WRIT OF

3 CERTIORARI. |

-REPORTS OF OPINIONS BELOW.

This petition i is made to obtain a review of an erroneous

judgment of the United States Court of Appeals for the

- Ninth Circuit (hereinafter called the ‘‘Court of Appeals’’).

a are delivered upon the rendering of that judgment

is at this time reported only at 169.U. 8. P. Q. 584. That

judgment affirmed a decision of the United States District

Court for the Central District of California (hereinafter

called the ‘‘ District Cour t’’), the opinion for which decision

is reported at 299:F. Supp. 1152 arid at 161 U. 8. P. Q. 10.

Copies of thoge opinions are set forth in the appendix hereof.

: _ JURISDICTION.

(i) The judgment of the Court of Appeals for which

review is sought was rendered and entered on April 12, 1971.

(ii) A rehearing relating to the judgment sought to be

reviewed was not requested.

‘An enlargement of the time within which to file this

petition was not requested.

(iii) This Court has jurisdiction to review the judgment __

in question by writ of certiorari by virtue of 28 U, 8. C.

§1254(1).

‘QUESTIONS PRESENTED.

a) Did the Court of Appeals err when it affirmed j a

summary judgment of the District Court that combination

-- claims 5, 6, and 7 (all the claims in suit) of United States

patent 2,843,408 (which hereinafter is called the ’408 and

~which does not expire until July 15, 1975) are invalid, which

decision is in direct conflict with a final judgment of the

United States. Court of Claims in February, 1967, made

1, Stukenborg v. United States, 372 F. 2d 498 (Ct. Cl. 1967),

’

Oey Aes. »

Rn MOT i he Ri BE Ho a

eaten ote

? .

:

2 Petition for Writ of Certiorari

following a full and fair trial on the merits, that these iden-

tical claims are valid? ‘

(ii) In view of the final judgment in February, 1967 of

the Court of Claims holding valid all claims in suit here, and

especially in view of this Court’s decision of May 3, 1971 in

Blonder-Tongue Laboratories, Inc. v. University of Illinois

Found. (#338), 91S. Ct. 1434, which decision places great

~ emphasis upon judicial economy and allocation of resources,

should the.respondent be estopped, as a resylt of a-plea of:

estoppel by petitiovers following an opportunity to so plead,

from denying the validity of each and every claim in suit

here except to the extent that any such denial is based upon

a showing by respondent either that there was not a full and

fair litigation of the issue of invalidity in the Court of

Claims or that. respondent has different and demonstrably

distinguishable: admissible evidence. relating to invalidity

than that evidence received by the Court of Claims?

_ (iii) Did the Court of Appeals err when it. failed to

apply the sole and exclusive statutory test of patentability,

contained in the Patent Act of 1952 and set forth as a man-

date in this Court’s decision in Graham v. John Deere Com-

pany of Kansas City, 383 U. S. 1, 86S. Ct. 684 (1966), and

-instead applied a-different test, which test was created in

1936 in connection with facts plainly distinguishable. from

those existing in this action ?*

(iv) Did the Court of Appeals e1 err when it ignored the

| statutory presumption, as strengthened by the final judg-

ment of the Court of Claims referred to above, that each |

and every claim in suit is valid, and held those claims. in-

valid?

2. The test referred to was used in the cutimoted decision of

Bassick Manufacturing Co. v. R. M. Hollingshead, 298 U. S. 415,

56 S. Ct. 787, 80 L.Ed. 1251 (1936).

“

4

<SPAN RU RE ee aS,

_ Petition for Writ of Certiorari Zz

STATEMENT OF THE CASE.

This action for ‘Bp porns and inducement of * in-

fringement under 35 U.S. (. § 271 (b)'and (c) of claims 5, 6,

and 7 of the ’408 was commenced on August 31, 1967. The

District Court had jurisdiction of. the subject matter by

virtue of 28 U.S. C. § 1331 and 1338(a). .

‘The subject matter of the ’408 is the: widely known,

_ recognized, and used military: standard aircraft turnbuckle |

assembly. The device embodying the invention patented by ©

the ’408 is illustrated on page A37 of the appendix hereof.

. It may be observed from that illustration that such an as-—

sembly has three clements: a a barrel 11; end seams 21; and

clips 31.

A seven-judge panel of the Court of Claims, in affirm- ,

ing an experienced patent trial cofmmissioner who now is a

judge of the United States Court of Customs and Patent.

Appeals, recognized and held, in a February, 1967 decision

reported at 372 F. 2d 498, that, 6f the seven claims in the

’408, the first four are.so-called element claims, defining as.

they do the elip illustrated in Fig. 1 on page. A37 of the

appendix hereof, and the last three (5, 6, and 7) are. so-called

combination claims, defining as they do the turnbuckle as-

sembly illustrated in Fig. 5 on page A37 of the appendix

hereof.

The*Court of Claims alse held in its Sehieary;. 1967

decision, following ‘a full trial on the merits, ‘that the sub-

ject matter of: claims 5, 6 and 7, the only claims in suit in

‘the instant action, was neither anticipated nor remdered

obvious by the relevant prior art. :

Not long after the commencement of the instant action

in August, 1967, the respondent moved. for a summary

judgment that claims 5, 6, and 7 are invalid, and the District

Court granted that motion. It held claims 5, 6, and 7 in-

valid, thus creating.a direct conflict w ith the earlier decision

of the Court of Claims.

~*~

a Os

4 _ Petition for Writ. of Certiorart

The Court of Appeals affirmed the decision of the Dis-

trict Court. In so doing, it abandoned most of the positions

taken by the lower court, but then, after expressly declining

to apply the ‘‘obviousness”’ tést set forth in this Court’s

decision in Graham, supra, applied a judge-made test, dis- ;

eussed hereinaftersin the argument portion.

As is apparent, the Court of. Appeals decision preceded

this Court’s decision in Blonder- Tongue, supra. - Peti-

tioners, therefore, did not present a plea of oneness in the

courts alow.

Petition for Writ of Certiorarti 5)

ARGUMENT.

_ The judgment for which review is sought created a

conflict of decisions relating to the identical subject matter

between the Court of Appeals and the Court of Claims.

* This conflict of decisions relating to the validity vel non of -

a United States patent is in and of itself a special and im-

portant enough reason to justify the granting of this

petition. This conflict becomes more serious when two

additional points are considered: (a) the conflict is between

a decision of validity reached after a-full and fair trial on

the merits and a later decision of invalidity reached in re-

sponse to a motion for summary judgment; and (b) the

patent in suit does not expire until July 15; 1975. When

these kgints are considered side by side with the fact that

there was no demonstrably distinguishable evidence of in-

validity relied upon by the Court of Appeals and the District

Court than that evidence relied upon by the Court of Claims

in reaching its earlier decision, it becomes apparent that the

courts below misconstrued and abused the authority granted

to the District Court by Fed. R. Civ. P: 56. Accordingly,

this Court should take jurisdiction of this case to remedy

the obvious injustice which has been done.to the petitioners.

However, this case presents not only a conflict of de- -

cisions of two significant courts in the federal court system,

but also presents a very important question of federal.

patent law which arises because of this Court’s decision in

Blonder-Tongue, ‘Supra, as well as at léast two instances

where the Court of Appeals defied clear and viable decisions

of this Court. 7 .

It is to that important question of federal patent law

and the two instances referred to above where the Court of .

Appeals decided substantial federal questions in conflict

3. E.g., United States v. Jefferson Electric Mfg. Co., 291 U. S.

386, 302-305 (1932).

6 *. Petition for Writ of Certiorari

with applicable decisions of this Court that the remainder

of this petition is directed. .

(i) Important Question of Federal Patent Law.

In Blonder-Tongte, supra, this Court reversed at least

in “part Triplett v. Lowell, 297 U. S. 638, 56 S. Ct. 645, 80

_L, Ed. 949 (1937) and held that a plea of estoppel is avail-

able to one facing a charge of infringement of a patent that

has once been declared invalid, and that such a plea shall

be accepted except if the patent owner can show that the

holding of invalidity was caused by the absence of a full

and fair chance to litigate the patent. The reasons under-

lying that holding were that such a rile is not inconsistent

- with the objectives of the patent system, that such a rule

‘promotes judicial economy, and that such a rule attenuates

misallocation of resources by the parties.

In the instant case, the converse of the Blonder-Tongue

facts is present: the respondent is faced with a charge of

infringement of a patent that has been held valid.

In view of the fact that each and every reason justifying

the adoption of the rule announced in Blonder-Tongue is

likewise present in the instant case, this Court should take.

jurisdiction of this action and carefully consider | the adop-

tion of the following rule: a plea of estoppel to deny validity

is available to the owner of a patent as to each and every

claim thereof which has been held valid, and that such plea

shall be accepted except if the one charged with-inf ringe-

‘tent can show that the earlier decision was caused by the

failure of the federal court rendering that decision to —

afford a full and fair opportunity to litigate the issue of

invalidity or that the one charged, with infringement can

show that he has different, admissible, and demonstrably

distinguishable evidence relating to the issue of invalidity.

The adoption of such a rule, having the built-in safeguards

that it does, riot only responds to each and every. reason ~

Petition for Writ of Certiorart | a

underlying the decision in Blonder-Tongue, but also pro-

tects and preserves the due process rights of the one

charged with infringement.

In respect of the proposition that such a rule is fully

supported by the reasons underlying the decision in

Blonder-Tongue, certainly the proposed rule is consistent

with the co-objectives of the federal patent system: (1) re-

ward inventors; and (2) protect. the public against the use-

of invalid patents. The reward to a patent owner, who has

gone beyond the statutory presumption of validity and,

through the expenditure of a large sum of money, has fur-

ther established the validity of his patent by a final judg-

ment of a federal court, is strengthened. Yet, under the

proposed rule one charged with infringement of a patent

once held valid is not foreclosed from again placing in.issue

the validity of the patent provided that he can show a defect

in the earlier adjudication or distinguishable invalidating

evidence. Thus, the public plainly is protected from the

improper use of invalid patents. Fufthermore, clearly such

a rule would promote judicial economy by decreasing the

number of patent trials and would attenuate the misalloca-

tion of resources which attends a second trial on the same

issue.

Since this Court has seen fit to ov errule Triplett, it now

is timely to adopt a rule which, although it favors a keystone

of our society, inventors, it also protects and fully preserves

the significant interest of the public in our aise system.

(ii) Failure to Adhere to Mandate of Gr un v. John Deere

Company.

This Court in Graham v. John Deere Company of

Kansas City, supra, announced clearly and forcefully that

patentability under the federal patent system no longer was.

to be determined by. the application of judge-made rules.

For example, in Graham, the Fifth Circuit-rule that a

8 | Petition for Writ of Certiorari

combination which produces an ‘‘old result in a cheaper and

otherwise more advantageous way’? is patentable: was firmly

rejected. Instead, Graham beeame a mandatethat the sole

“and exclusive test of patentability in the absence of an.

oe = a . ‘“ . .

anticipation * of the invention is the so-called ‘‘obviousness”’

test spelled out in 35 U. S.C. § 103. The noble objective of te:

this landmark decision was, and indeed stillis, inthe words

2 of Mr. Justice Clark:

‘*We believe that strict observance of the requirements

Pied $ A . ° . .

laid down here will result in ‘that uniformity and

definiteness which Congress called for in the 1952

Act.??5

The use of the obviousness test requires, as is revealed

- in Graham, an inquiry by the Court into several relevant

facts, including the level of ordinary skill in the pertinent

art. Sa ses a

For present purposes, and put simply, it suffices to say

that the Court of Appeals did: not follow the mandate of

Graham. That is readily apparent from the following state-

ment in the Court of Appéeal’s opinion:

‘*We do not pass on the matter of obviousness, but we

hold that in other respects the district court was

right. sis

The Court of Appeals then re to pee a test of:

. patentability w hich appeared for the first time in 1936,’

' prior to the 1952 Patent Act, and long before Graham, and

4. Anticipation exists when a single document, such as a patent,

reveals the entire invention sought to be patented. This principle is:

not applicable to the instant case.

5. At 383 U. S. 18, 86 S. Ct. 694.

6. At page A3 of the appendix hereof. -

7. Bassick Manufacturing Co. v. R. M. Hollingshead, 298 U. S.

415, 56 S. Ct. 787, 80 L. Ed. 1251 (1936). °

Petition for Writ of Certiarari 9

which arose out of an unusual set of facts and a set of facts

plainly distinguishable from the facts in the instant action.

That test is, as stated in ies opinion of the. Court of

Appeals: | ian

—~*Substituting an improved shied in an old combina-

tion, without adding another element, to accomplish the

same result, does not give plaintiffs a right to claim a.

patent monopoly on the whole. combination.”’ ®

The use of this rule, which has no basis whatever in the

federal patent statute, was a clear violation by the Court .

of Appeals of the mandate of Graham and has caused the

very thing that Graham sought. to prevent: lack of aa

formity in our patent system.

Therefore, this Court should take Juvindibtings of this

matter and finally settle the proposition thatthe rule first

announced in Bassick, supra, and two years later applied in

an analogous situation in Lincoln Engineering Co. of Del.

v. Stewart-Warner Corp., 303 U. S. 545, 58 S. Ct. 662, 82 L:

Ed. 1008 (1938), is not a viable test of patentability. In-

stead, this Court should: make clear that it is the duty of

_’ the courts below to follow the mandate of Graham and make

the appropriate factual inqtiries. It is of significance to

note here that, when such an inquiry is considered, it is

apparent that the District Court exéeeded its authority

under Fed. R. Civ. P. 56 when it granted a summary judg-

ment. of invalidity, especially after the Court of Claims had

found following a trial that the subject matter of each and

— one of the claims in, suit here was not obvious. .

(iii) Failure to Give Any Effect to the Prenumption of

_ Validity.

Throughout Blonder-Tongue, supra, Mr. J ustice White

repeatedly refers to the significance of the statutory pre-

ecmcaient

8. At page A6 of the appendix hereof.

107 Petition for Writ of Certiorari .

sumption of validity contained in 35 U. S. C. § 282. Yet, in

the instant case, it truly is correct to say that the Court of

Appeals gave that viable presumption no effect whatever.

Even if we assume arguendo that the test of patent-

ability applied below is a permissible test, it is plain that

the presumption of validity, as strengthened by the decision

of the Court of Claims, should have prevented the Court of

Appeals from reaching the conclusion that it did.

In order-to appreciate the error of the Court of Appeals

in this respect, it is necessary to understand only that the

basis for the court’s holding of invalidity in substance was

that the combination of a barrel, end pieces, and a clip—

albeit that the clip was different than that claimed in’the

claims in suit—was a part of the prior art when the inven-

tion in suit was made. As the Court of Appeals makes clear

: in its opinion, that combination is shown in an earlier patent

to the inventor of the invention in suit here, United States

patent 2,580,482.° That patent not only was cited and con-

sidered by the Patent Office in the granting of the patent in

suit, but also itself was in suit in the same case in the Court

of Claims when clarms 5, 6, and 7 of the patent in suit were

held valid by that court. Thus, since the Patent Office, as |

. well as the Court of Claims, knew of and considered the very |

prior art used as the basis for the Court of Appeals decision .

of invalidity, there can be no other conclusion than that the

Court of Appeals ignored the significant and wise statutory

presumption that a patent is valid unless clear and. con-

vineing evidence, distinguishable from that considered by

the Patent Office, is adduced.

: A‘s a sequel to the pronouncements of Mr. Justice White

in Blonder-Tongue respecting the statutory presumption of

validity, this Court should take jurisdiction of this case and

_ clearly establish the principle that the presumption must be

9. At page A5 and A6 of the appendix hereof.

PNG AGRI ETT ge P:

Petition for Writ of Certiorari 11

considered and applied when determining the validity of a

patent. — . . 3

CONCLUSION.

For the reasons set forth heretofore, this Court should

issue a writ of certiorari to the United States Court’ of

Appeals for the Ninth Circuit to review its judgment in

this case. Ley *

Respectfully submitted,

JOHN J. McALEESsE, JR.,

12'S. 12th Street,

Philadelphia, Pa. 19107

(215) WA 3-4466, |

Attorney for Petitioners.

. Of Counsel:

Aurrep C, AuricH,

3300 Tice Creek Drive No. 8,

Walnut Creek, California 94595.

“- Z = ®

OE sto

°

Greer PRIMO SOAR URtiThIe Posten Boe ws ts

Appendix.

_ COURT OF APPEALS DECISION.

_ UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

No. 24389

Louis C. StUKENBORG, ET AL.,

Plaintiffs-A ppellants,

v. a

TELEDYNE, Inc., A CorPoRATION, |

Defendant-A ppellee.

[April 12, 1971]

APPEAL F'Rom THE UNITED States District Court FOR THE

, CENTRAL District oF CALIFORNIA ;

Before: Barnes, Duniway and Ety, Circuit Judges

Duniway, Circuit Judge: roa

_.This is an appeal from a final partial summary. judg-

ment (Rule 54(b) F: R. Civ. P.) in a patent infringement

case. We affirm: Appellants are the owners and the exclu-

‘sive licensee of Patent Number 2,843,408 (the ’408 patent). .

They brought this action against appellee Teledyne, Inc.,

.for-inducement of infringement and contributory infringe-

(a1)

A2 - ) prasad Appeals Decision

ment of claims 5, 6, and 7 of the patent, 35 U.S: C. §§ 271(b), -

(ec), 281. Teledyne filed a motion for partial summary judg-

ment under F. R. Civ..P.°56(b), which was granted. - *

Claims 5-7 of the *408 patent have previously been liti- -

gated i in the Court of. Claims, though the parties before. that

court wére not identical with the parties before us. Stuken-

borg v. United States, Ct. Cl, 1967, 372 F. 2d 498. That

court found claims 5-7 to be valid combination claims. As

will be seen, we disagree, .

‘1. The facts.

This case revolves around a turnbuckle, details of the

design for which are the subject of the disputed claims. The

. turnbuckle ‘assembly is intended for use in aircraft, to main:

tain tension in eables connected to the controls. It has four -

basic components: (1) a barrel or sleeve, ‘forming.the central

section of the assembly and having internally threaded

ends; (2) two end pieces, having exterior threads, each of

‘which screws.into one end of the barrel and is attached to :

one end of the cable joined by the turnbuckle; (3) grooves

cutting across the threads of the barrel and end pieces, and

(4) a wire clip, which is inserted in the aligned grooves and

. thus locks-the barrel and end pieces’ so that the end pieces

cannot rotate within the barrel.. The assembly i is described

in considerably. greater detail in the district court’ S opinion

in this ease, reported at 299 F. Supp. 1152, w here the lan-

guage of the claims of the ’408 patent is subbtentially set

out, id. at 1154-55, 1156 n. 11, and where a drawing of the

turnbuckle assembly is given, 7d. at 1169 (Appendix D). We

need not describe the assembly in any detail here; it suffices

to refer to the district court’s opinion. Nor do we discuss

the history behind the development of an effective lock for

aircraft turnbuckles, for that is adequately set out in the

opinion of the Court of Claims. 372 F. 2d at 500-502.

Court of Appeals Decision - ae

Teledyne’s motion for partial summary judgment. as-

~ serts: (1) that claims 5-7 of the ’408 patent, if valid, cover

. only the wire locking clip and no other parts of the turn:

“buckle assembly, that Teledyne manufactured, purchased,

and marketed only turnbuckle barrels and end ‘pieces and |

not the clips, and that claims 5-7 were therefore not in-|

fringed; and (2) that if claims -5-7 of the ’408 patent are’

combination claims covering the entire turnbuckle assembly, —

they are invalid for obviousness and overclaiming. In-sup- —

port of its motion; Teledyne filed an affidavit of William A.

Toplikar, in which he stated that he is the person most

familiar with Teledyne’s activities since 1959 in purchasing,

manufacturing, and marketing turnbuckle’, that .Teledyne

‘has sold many different types, sizes and qualities of turn-

buckles and components therefor,’’ but that it has never

manufactured any of the wire clips: described in the ’408

patent. The very few such clips that it -s6ld to its custo-

mers, it purchased from a-licensee of the ’408 patent: Mr.

Toplikar’s statements of fact stand uncontradicted by ap-

pellants.

patent covered the clip only and that there was no infringe-

ment of those claims. 299 F. Supp. at 1154-57. The court

also found tliat if claims 5-7 were combination claims, they

were invalid for obviousness and overclaiming. _ Jd. at 1157-

65. We do not pass on the matter of obviousness, but we

hold that in other respects the district court was right.

2. The propriety of summary judgment. -—

Appellants object strenuously to the granting of sum-

mary judgment in thig patent case. However, ‘‘[i]t is well

settled, in this and other circuits, that summary judgment

‘holding a patent claim invalid, is proper.if the . . . require-_ 2 sas

ments [of Rule 56, F. R. Civ. P.] are met.’’ Proler - Steel

Corp., Inc. v. Luria Bros. & Co., 9 Cir., 1969, 417 F. 2d 272,

The district court found that claims 5-7 of the .’408 |

**

a Court of Appeals Decision

273, citing numerous decisions of this court. See also Ash-

croft v. Paper Mate Mfg. Co., 9 Cir., 1970, 434 F. 2d 910, 911-

912. The requirements of Rule 56 are met in this case.

; An ;

3. Claims 5-7 as clip claims. |

Claims 5-7 are ambiguous. Each i is susceptible to inter-

pretation either as a claim for the wire clip only or as a

claim for the entire turnbuckle assembly. After a lengthy

syntactical analysis, the district judge concluded that clainis

o-7 covered only the clip. 299 F. Supp. at 1154-57. While

we admire the district judge’s linguistic exactitude, we ex-

press no opinion as to the correctness of hisconclusion. For

assuming ‘arguendo that claims 5-7: cover the clip only, no

contributory infringement or inducement of infringement

has occurred.

It is well settled that ‘if there is no direct infringement

of a patent there can-be no contributory infringement:’’

Aro Mfg. Co. v. Convertible Top Co.,. 1961, 365 U. S. 336,

341. Since appellants did not charge Teledyne with direct -

infringement, the only’ direct infringement of possible rele-

vance would be direct infringement by the purchasers of

Teledyne’s turnbuckle components. If these purchasers and ~

users ‘‘could not be amerced as [infringers] certainly one

who soldyYo [them] . . . cannot be amerced for contributing

to a non- existent infringement. ”? Id , quoting M ercotd Corp. .

. Mid-Continent Investment Co., 1944, 320 U. S. 661, 674

(aghertas F dissenting).

The Toplikar affidavit states that ee s sales of

turnbuckle components consist almost entirely of end pieces

and barrels, and that the few clips sold had been purchased

from licensees of the patent. Appellants have not contro-

verted these assertions. If claims 5-7 of the ’408 patent

~-eover only the clip, purchasers of barrels and end pieces

from Teledyne do not infringe. Additionally, purchasers

Court of Appeals Decision ==. eu

of clips — Teledyne do not infringe, for oe pur-

chased the patented items from a licensee of: the patent.

United States v. Univis Lens Co., 1942, 316 U. S. 241, 249-52;

Hensley Equipment Co. v. Esco Corp., 5 Cir., 1967, 383 F. 2d

252, 263. Conceivably, the purchasers of Teledyne’s barrels ~

and end pieces could have purchased them with the intent to

assemble them together with clips acquired from others than

a licensee of the ’408 patent. However, appellants have not

shown, by affidavit or otherwise, that any such thing oc-

curred. Since appellants have not shown a direct infringe-

ment, no contributory infringement exists. :

An identical conclusion obtains in the case of induce-

ment of infringement, for as with contributory infringement,

direct infringement is a prerequisite. ‘See Aluminum Ex-

trusion Co. v. Soule Steel Co., C. D. Cal., 1966, 260 F’. Supp.

_. 221, 224.

3. Claims 5-7 as combination claims.

If we regard claims 5-7 as combination claims, as appel-

lants urge us to do, we need not inquire whether the claim's

. have been infringed, for we agree with the district judge

that the claims are invalid for overclaiming. ,

The parties agree that two patents are pertinent prior

art German patent No. 747,256 (the German patent), and

United States Patent Number 2,580,482 (the *482 patent)

granted to appellants Stukenborg and Utterback.! The dia-

grams accompanying these two patentS appear in 299 F.

Supp. at pages 1166 (Appendix A) and 1167 (Appendix B),

respectively. Like the ’408 patent, each of these two earlier

patents shows a threaded barrel, two threaded end pieees,

and a wire clip inserfed in a longitudinal groove running

across the threads, to prevent rotation of the end pieces

1. The district judge actually found’ three prior art references. -

The third was United States Patent Number 2;843,407. We find it

unnecessary to decide whether it, too, is relevant prior art. |

t*

s

A6 Court of Appeals Decision

relative to the barrel and to each other. The source of the

differences among the three assemblies is solely in the sub- ,

~ stitution of a wire locking clip for another.

The district judge drew the following conclusions from

these similarities, conclusions that are eminently correct :

‘‘When Stukenborg allegedly invented what became

the 408 patent, he did not take old components and add

- anew element to cause the old components to achieve a

different or unexpected result. He simply improved

the wire clip and substituted the improved clip for the

by older clips, as had been done in the 482 patent . . .

over -the German patent. Substituting an improved |

element in an old combination but still using the same

basic elements (barrel, end pieces, wire locking clip) as

was used in the old combination, withont adding another

element, to accomplish the same result, does not give

plaintiffs’ a right to claim a patent monopoly on the

whole combination. Lincoln Engineering Co. of Illinois

v. Stewart-Warner Corp., 303 U. S. 545, 58 S. Ct. 662, .

82 L. Ed. 1008 (1938); Bassick Manufacturing Co. v.

R. M3 Hollingshead, 298 U. S. 415, 56 S. Ct. 787, 80 L.

Ed. 1251 (1936); Evans Products Co. v. Preco Incor-

porated, 378 F. 2d 191 (9th Cir. 1967); Goodman vy.

Super Mold Corp. of California, 103 F. 2d 474 (9th Cir.

* 1939). Even if it is assumed that the improved clip

claimed in the 408 patent is inventive and patentable

‘over the old clips this still does not give plaintiffs a

right to claim a monopoly on the whole combination.

In re Tibony, 241 F. 2d 953, 44 CCPA 801 (1957).

299 F. Supp. at 1163-64.

See also Great Atl. €& Pac. Tea Co. uw. Supermarket Equip-

ment Corp., 1950, 340 U. S. 147, 152-53; Proler Steel Corp.,

Inc. v. Luria Bros, € Co., 9 Cir., 1969, 417 F. 2d 272, 277-78;

Court of Appeats Disision a . AZ

Holstensson v: y. M Corporation, 6 Cir., 1963, 325 F. 2d 109,

(122-125.

4. The presumption of validity.

. Appellants stress the presumption of validity of the

‘patent under 35 U.S. C. § 282. That statutory presumption,

however, ‘‘is of no effect when it is wholly dissipated by re-

butting considerations.” Groen v. General Foods Corp.,-9

Cir., 1968, 402 F. 2d 708, 711 n 2. The.documents and. ex-

hibits accompanying Teledy ne’s motion for summary judg-

ment are clear and convincing evidence of the unpatent-

ability of claims 5-7 as combination claims, and so are

sufficient rebutting considerations. Hayes Spray Gun Co,

v. E. C. Brown Co., 9 Cir., 1961, 291. F. 2d 319, 322. More-

over, the file wrapper of the ’408 patent does ‘not list t

German patent as a prior art reference, see 299 F. Supp. at

1164 and n 38. Monroe Auto Equipment’ Co..v. Superior

Industries, Inc., 9 Cir., 1964, 332 F. 2d 473, 481.

5. The Court of Claims decision.

_ Appellants rely heavily on the decision of the Court of

Claims in Stukenborg v. United States, Ct. Cl. 1967, 372 F.

2d 498. .Of the several holdings in that decision, the only

“one pertinent here is the determination that claims 5-7 of

the *408 patent are valid combination claims. 372 F. 2d at

002. We simply disagree with that determination. |

Affirmed. : . °

AS Court of Appeals Judgment

JUDGMENT OF COURT OF APPEALS.

Arreat fronr the United States District Court for the

Central District of California.

Tuts Causk came on to be heard on the Transcript of

the Record from the United States Distriet Court for the .

Central Distriet of California and was duly submitted.

Ox ConsIDERATION WHEREOF, it is now here ordered and

adjudged by this Court, that the judgment of the said Dis-

triet Court in this cause be, and hereby is affirmed.

Signed and Entered April 12, 1971.

District Court Decision _ AY

DISTRICT COURT DECISION.

Louts C, STUKEN BORG, Haken V. Urrersack AND

ASsocIATED Arcrart Tecientiee, A PARTNERSHIP,

Plaintiffs,

v.

: ay-§

3

TELEDYNE, Inc., A CorPorATIoN,

Defendant.

Civ. A. No. 67-1294.

Unitep States Districr Court Cent. D. CaurrorNnia

Jan. 24, 1969.

[299 F. Supp. 1152 (1969) ]

Andrew J. Belansky, Christie, Parker & Hale, Pasa-

-dena, Cal., Alfred C. Aurich, John J. McAleese,’ Jr., Syn-

- nestvedt & Lechner, Philadelphia, Pa., for plaintiffs.

George F. Smyth, William H. Pavitt, Jr., Smyth,

Roston & Pavitt, Los Angeles, Cal., for defendant.

|

Al0- District Court Decision

~ MEMORANDUM AND ORDER GRANTING MOTION

FOR PARTIAL SUMMARY JUDGMENT.

Precerson, District Judge. '

Defendant, Teledyne, ‘Inc., filed a motion for partial

sunumary judement on May 22, 1968. Plaintiffs filed their

‘opposition and defendant filed a reply. Oral argument on

the motion was held before the Court on October 7, 1968,

and the matter was submitted to the Court for its decision.

Having considered the pleadings and papers on file and the”

oral arguments of counsel, the Court now makes the follow-

ing findings of facet and conelusions of law. :

Plaintiffs, Louis .C, Stukenborg and Harold V. Utter-

back are citizens of the United States residing in Memphis,

Tennessee. Plaintiff, AsSociated Aireraft Industries is a

perthersne of the State of Tennessee, and is composed of

Elmer S. Mddins, Jamres D. Nunnally,sDavid A. Nunnally,

Alice N. Smith, and Betty G. Nease: Defendant is.a Dela-

ware Corporation with its regular and established place of

business within this judicial district.

This is an ation for contributory ‘patent infringement

and inducement of infringement arising under 35 U.S. C.

§§ 281 and 283. Jurisdiction is based{on : 28 U.S. C. § 1338

(a). 2 | : ie :

Plaintiffs Stukenborg and Utterback are, and at all.

relevant times have been, owners of United States: Patent

No! 2,848,408 [hereinafter referred to as the 408 patent], ;

issued on July 15, 1958. Plaintiff Associated Aireraft In-

dustries is the exclusive licensee under the 408 patent with

‘the right to grant sublicenses. Plaintiffs claim that defend-

ant has been contributing to the infringement of the 408

3 patent by selling components that constitute a material part

of the invention, knowing that the components wb6uld- be

usgd in an infringement of the patent.

District Court Decision All

The 408 patent labels the invention as ‘Lock for Turn-

buckles.’? The relevant components of the turnbuckle as-

sembly described in the patent are the tu rnbuckle barrel or

sleeve, thé turnbuckle end picces, and a wire clip which is

used to lock the barrel and the end pieces so that the end

pieces cannot rotate in relation to the barrel and to each

other.’ Plaintiffs brought suit against the United States in.

the Court of Claims on this same patent, on the grounds of

infringement, and the Court of Claims upheld the patent as

valid. Stukenborg v. United States, 178 Ct. Cl. 738, 372 F. |

2d 498 (1967). The history of the search for an effective

means for locking a turnbuckle assembly and the success of

the invention embodied in the 408 patent are described in

that opinion,” and therefore will not be repeated here.

‘Defendant sells barrels and end picees conforming to

the barrel and end pieces shown in the diagram included

with the 408 patent, Appendix D. Deferidant does not make

. the wire clips shown in the patent diagram, and those elips

which defendant has sold that conform to the clips pictured.

in the patent diagram were purchased by defendant from a

sublicensee of plaintiff Associated Aircraft Industries. De-

fendant claims that the 408 patent is invalid, or, if it is valid,

then it gives plaintiffs a patent monopoly only on the wire

locking clip and not on the corresponding barrel and enc

pieces. sf

There is no dispute that claims 1-4 of the 408 patent are

directed to and cover only -the wire locking clip, and the

validity of claims 1-4 is not an issue in this action. Plain-

tiffs contend and defendant deniés that claims 5-7 of the 408

patent cover the whole turnbuckle assembly.as combination

claims. Defendant argues that claims 5-7 of the 408 patent

describe the barrel and end pieces to give the background or

show the environment in which the locking clip is to be used,

1. See Appendix D.

2. 372 F. 2d at 500-502.

I a

(a -

ce eee ne enemies mee ene nee gpa mene nw

Al2 ee District Court Decision”

rather than to claim the combination. All parties agree that

the proper construction of claims 5-7 is a question of law

rather than a question of fact.

This Court concludes as a matter of law, that claims

5-7 of the 408 patent relate to the wire locking clip and are

not claims for the complete turnbuckle assembly. This Court.

concludes in the alternative that if claims 5-7 are to be read

as claims for the complete.turnbuckle assembly, then as a’

matter of law, ‘based on the uncontradicted facts before the

Court, claims 5-7 are invalid. .

CLAIMS 9-7. OF THE 408 Parent Are CLAIMS FoR THE WIRs

Lockine Ciip Ratner Tran For THE TURNBUCKLE ASSEMBLY,

Claims 5-7 of the 408 patent are not clearly drafted and

therefore give fise to this dispute over their meaning. ‘The

first sixteen lines of each of claims 5-7 are identical and read

as follows: .

es claim:

In a turnbuekle assembly which includes.a hollow,

internally threaded barrel, threaded | rod ends

threadedly engaged with said barrel, said rod ends |

‘being: respectively longitudinally grooved and: said

barrel having complementary grooves registered

with said rod end grooves, said barrel being trans-

versely apertured substantially at its longitudinal .

| center, resilient wire-like lock clip means for lock-

ing said assembly against relative rotation com-

- prising an elongated locking portion lying in and

extending inwardly throughout the majority of the

lerigth of ‘complementarily registered barrel and

rod end grooves, a stem integrally connected at its

outer end’ ‘with the outer end of said locking portion

lyi _ along the exterior of said barrel and biased

2. Hearing on Defendant’s Motion for Partial Summary Judg-

‘ment, before ssid =o Judge, October 7, 1968, R. T. p. 23.

District Court Decision . A13

‘toward the surface of said barrel by the resiliency

~ of said clip méans, an anchor portion connected to

ee language of each of the claims varies somewhat in

. the description of the anchor*portion and its opera-

tion].’?

~ Plaintiffs -cite various statements -in the file wrapper

and in the specifications to show that claims 5-7 were con-

sidered as combination claims by the Patent Office and ap-

proved as such.‘ Plaintiffs also point out that the difference

-in form between claims 1-4 and claims 5-7 in itself indicates

that claims 5-7 were designed to claim something over and

above the wire locking clip, which was adequately covered in

-¢laims 1-4.°. Defendant, on the other hand, cites different

statements in the specifications and in the file wrapper of

the 408 patent to show that the only invention claimed in the

408 patent was the wire locking clip. :

It is difficult to determine whether the patent examiner

who processed the 408 patent considered claims 5-7 as fur-

ther claims relating to the wire locking clip alone or as’

claims for the combination turnbuckle assembly... But the

understanding or intention. of ‘the patentee or the patent

examiner is not deterniinative here, for patent claims are

to be re&tricted to their actual language.’ | |

4. Plaintiffs’ Memorandum of Points and Authorities in -Oppo-

sition to Defendant’s Motion for Summary Judgment, filed July 15,.

—. 1968, at pp. 17, 22.

5. Id. at pp. 18-22.

6. Memorandum of Points and Authorities in ‘Support of De-

fendant’s Motion for Partial Summary Judgment,.filed May 22, 1968,

at pp. 4-7; Defendant’s Reply to Plaintiffs’ Memorandum ‘of Points

-_

and Authorities in Opposition. to Defendant’s Motion for Summary

Judgment, filed July 22,-1968, at pp. 23-24.

: 7. Aro. Mfg. Co. v. Convertible Top Replacement Co., 365 U. S.

336, 339-340, 81 S. Ct. 599, 601, 5:L. Ed. 2d 592 (1961).

i the inner end of said stem, * * * [hereafter the

AOR ST PRETENSE

% ° -

errr: aati laa Gas cat Cohee EG re oe PURER RR RISER irk AYRE

Al4 / ' District Court Decision

Examining the form of claims 5-7, one finds that the

claims do not begin with a description of the iten\(s) being

claimed. Instead they begin with a preamble describing the

environment in which the claimed item(s) operate. The

preamble begins with the words ‘‘In a turnbuckle assembly

which ineludes * * *."*. The words of the preamble do not

deseribe what-is being claimed. The preamble tells where

the claimed item(s) will be used, and therefore limit the

claim to the environment deseribed.* Thus, When preceded

by the word ‘‘In,’’ the words ‘‘turnbuckle assembly’? indi-

cate that the environment for the claimed item(s) is a turn-

buckle assembly and do not indicate that. the turnbuckle

assembly is itself a claimed item. The words ‘‘which in-

cludes’’ begin a subordinaté adjective clause that describes

or tells what is meant by the words ‘turnbuckle assembly. ”’

Everything following the words ‘‘which includes’’ that is

part.of the subordinate clause serves to describe thé words

_ **turnbuckle assembly”? in greater detail. ‘Like the words

_**turnbuckle assembly,’’ all words that are used to deseribe

‘*turnbuckle assembly’’ in greater detail are also part of the

preamble indicating the environment for the claim rather:

‘than the item(s) being claimed. ;

The problem in this case is that of determining the end

of the preamble in claims. 5-7; and because the preamble

contains the subordinate adjective clause beginning with the

words ‘‘which includes,’’ the problem is that of determining |

' the end of that subordinate adjective clause. If the sub-

ordinate adjective clause contains the words describing the

barrel and.end pieces of the turnbuckle assembly, then the

‘ deseription of the barrel and end pieces is part of the state-

ment of the environment of the claim and is not part of the

. -Statement of the item(s) being claimed. This would mean

8: Williams Mfg. Co. v.. United Shoe Machinery ‘Comp. 316

. U. S. 364, 368-369, 62 S. Ct. 1179, 1182, 86 L. Ed. 1537 (1942) ;

ii _ 4 Deller’s Walker on Patents § 259 ‘(2d ed. 1965 ).

“o

¢

ee

> a

_ District. Court Decision. ©. AS

that claims 5-7 do not elaim the barrel and end pieces, either

alone-or in combination with the wire locking clip. On+the —

other hand, if the subordinate adjective clause beginning |

with the words ‘‘which includes’? does not contain the de-

scription of the barrel ard end pieces, then the description

of the barrel and end pieces could be. considered as part of -

the statement of the item(s) being claimed, and claims 5-7

might therefore be construed as claims for the barrel, the

end pieces, and the wire locking clip as a combination.

Kven with a’careful reading ‘of each of claims 5-7, it

seems as if the subordinate adjective clause beginning with

the words ‘‘which includes”? may continue through the en-

tire claim. Claims-5-7 aré therefore not well-drafted, for

it is not immediately clear where the introductory preamble

ends, and where the description of the item( s) being claimed

begins. Defendant asserts that the preamble ends just be-

fore the words “‘ resilient wire- like lock clip means.’’* Plain- -

tiffs apparently asser{ that it ends just before the words

“threaded rod ends.’ 7° et

The Court concludes that plaintiffs’ contention is un-

_ tenable from an ordinary reading of claims 5-7. To inter: ~ |

pret claims 5-7 it is helpful to note the language used in’

‘claims 1-4 of the same 408 patent. Each of claims 1-4 of the

408 patent, which plaintiffs agree are claims for the clip

alone, begins with the followi ing words:

“*T claim:

A lock clip adapted for use with a‘ “turnbuckle 2 as-

sembly which includes longitudinally grooved rods

and a barrel having grooves complementary to the .~

grooves in said rods, said barrel being transversely

9. Supra, i. 6.

"10. Supra, n. 4 at page 20.

- we

24

A16 —— -Distriet Court Decision ae

apertured to form diametrically Pn ape r-

tures," * * *,”? [emphasis added}

° ‘ : ; A

The subordinate adjective clause beginning with the words

—*whiech inéludes’’ is used in-elaims 1-4 to deser ibe the words

‘*turmbuekle assembly’? as in claims 5-7. Beeause claims .

1-4 are coneededly not clainis for the barrel and end: pieces,

it is clear that the barrel and end pieces (*¢rods’?) are men-

tioned.in claims 1-4 to deseribe the words ‘turnbuekle ‘as-

sembly."* This indicates that 'the subordinate adjective |

C ‘l: Use beginning with the w ords ‘*which includes’? continues

“through the it: ilieized words. Phere fore it is reasonable to

read the corresponding subordinate adjective. clause in

claims 0-7 also to continue at least through the description

of the barrel and end pieces, for in claims 1-4 and in elaims

o-7 the subordinate adjective clause is used to describe the

same words—-**turnbue ‘kle asse mbly. sh ; 7

11. Each of claims 1-4 reads ‘as follows: ,

“I claim:

A dock clip adapted, for use with a turnbuckle assembly which

includes longitudinally grooved: rods and a barrel having-grooves

complementary to the grooves int said rods, said barfel being cen-

trally transversely capertuted to form diametrieally opposed apér=-

tures, said clip comprising dn integral resili¢nt wire-like ‘member

“ including’ a stem having a lengtli to span from one. end of said

barrel to one of said apertures, an efongated locking. portion

adapted for insertion in. complementarily registered rod and bar-

rel “grooves, an arcuate end portion connecting one end of said °

~ stem to said locking portion with said locking portion normally |

resiliently urged into crossing alongside said stem adjacent, said

end. portion and projecting there beyond, said locking portion

having a lengtl’ substantially equal to but slightly less than the .

length of said stem, an anchor portion connected to the other end

of said stem * * *. [hereafter the language. of each of the ‘claims

‘varies sqgmewhat in the description of the anchor portion],

12. The Court here does not ignore the general principle that in

construing the claims of a patent, each claim is distinct and separate

and limitations in ong claim cannot be read into other claims. See

“Cameron Iron Works, Inc. v. Stekoll,.242 F. 2d 1721: (Sth: Cir.

1957). Here there is a limitation in both claims and fhe problem is:

‘to-determine where the words of limitation end and where the words

ee

.

— District Court Decision A17

Plaintiffs argue that the claims of the patent involved

in the case of Welsh Co. v.( ‘hernivsky ' are similar to claims

9-7 here and were interpreted hy the court in that ‘ase to be

combination claims. Plaintiffs fail to nottee, however, that

the claims in the Welsh case did not contain: the. words

‘which includés’? and the related subordinate ad jective

clause that is part of the preamble." In order to construe

Claims 5-7 of the 408 patent as clitims similar to those of the

Welsh case, one would have to ignore or delete the words

“which: ineludes,’? and<this would completely change. the.

meaning of the claims :: a

‘*T claim: cg

Ina turnbuckle assembly whiel inehides a hollow,

internally threaded barrel, threaded rod ends

threadedly engayed ' with said barrel, * * *,”?

This Court concludes, therefore, that claims 5-7 are not

written as combination Claims, for the language of claims

12. (cont.) |

of invention begin, in claims. 5°27. Claims 1-4 contain substantially

the sane words and are referred to merely ta understand the sentence

structure in claims 5-7,

13. 342 F. 20-586 (7th Cir. 1965 ).

14. The claims, 342 F. 2d at 589 n. 2, read as follows: “I claim:

In a resilient baby support, a marginal frame, a spring wire

base * *-4,” 7 i gee oe a

15. The attorneys who -prosecuted and,. presumably, drafted the

claims in the 408 patent were probably aware of the difference in

meaning when the words “which includes” are ‘used, for in another

patent, which they also prosecuted in the Patent Office for Stuken-

borg, they did not tise the words “which includes’” and the related

subordinate adjective clause, so that the claims in the latter patent

‘were liké the combination claims in the Welsh case:

*

s

*“T claim: fe

1. In a turnbuckle assembly, an externally threaded, longitu-

dinally grooved member, an internally threaded, longitudinally

grooved, hollow, barrel-like member, * * *” a

_ This latter patent was issued to Stukenborg on the same day-

that. the 408 patent was issued to him, as United States Patent No.

2,843,407, and is discussed in greater detail in the text, infra.

SEE Ne Diet OD DE OO RR Se WGA) aw & veka oo *

A18. - District Court Decision

5-7 deseribes the barrel and end pieces to modify the words

of environment “turnbuckle assembly’? rather than to de-

clare that these are elements of a combination being claimed,

Tre Dieverences Berween tur 408 Parent Turnpuck.e

ASSEMBLY AND THE TuURNBUCKLE ASSEMBLIES IN| THE

Prion Arr Are Sucw Thar tuk 408 Parenr Turn-

BUCKLE ASSK MBLY Coup Nor Constrrure A PATEN TABLE

COMBINATION,

In 1944 a German patent was issued for a lock for turn-

buckle assemblies, No, 747,256 [hereinifter. referred to as

the German patent]. The diagram accompanying the patent. .

disclosed a turnbuckle assenibly consisting of three elements

—a hollow barrel or sleeve, end picees, and a wire locking

clip." | pes 5

In 1945, plaintiffs Stukenborg and Utterback filed an’

application in the United States Patent Office for a patent

on their invention entitled ‘* Turnbuekle Lock.’’ This patent

“was granted and issued by the Patent Officé on January 1,

1952, as patent No. 2,580,482 [hereinafter referred to as the

482 patent J. The diagram ineluded with the 482 patent, like

the diagram of the 408 patent and the German patent, con-.

sisted of three comiponents ; the hollow barrel or sleeve, the

end pieces, and the wire locking elip.”7

ae In 1953, plaintiff Stukenborg filed in the United States

Patent Office an application for a patent on an invention

entitled ‘‘ Latch for Anti-Rotational Lock Means.’’ Although

it had been applied for almost three years before the 408

patent application was filed, this patent was issued by the

Patent Office on July 15, 1958, the same day on which the 408

patent was issued, as United States Patent No. 2,843,407

[hereinafter referred to as the 407 patent]. The diagram

included with the 407 patent, like the diagram of the 408

16. See Appendix A.

17. See Appendix B.

et eee eT

District Court Decision A19

patent, consists of three components: the hollow barrel, the

end pieces, and the wire locking clip.”

It does not appear from the Patent Office file wrapper .

of the 407 patent that either Stukenborg or his attorneys

ever mentioned to the patent examiner who was processing -

the 407 patent that there was a co-pending applieation for

what became the 408 patent. Nor, conversely, does it ap- ~

pear from the file wrapper of the 408 patent that either

Stukenborg or his attorneys ever mentioned to the patent

examiner processing that patent application that there was

a co-pending application for what became 407 patent.’® It

might also be noted that neither the 407 patent nor-the 408

patent cite the German patent as a reference.” ee

This Court finds that the German patent, the 482 patent,

and the 407 patent are prior art to the 408 patent. Plain-

tiffs agree that the German patent and the 482 patent can be

- used as prior art to determine the validity of the 408 patent

as a combination patent. There is a dispute, however, as to

whether the 407 patent can be considered as prior art to test

the validity of the 408 patent as a combination patent.

18. See Appendix C.

19. This question thereby remains a mystery in this case. In

their Statement .of Genuine Issues, filed July 15, 1968, on page 2,

plaintiffs state the matter as a question: a

“Whether the Examiners in charge of the applications for ’407

and ’408 otherwise indicated that they. were aware’ of the-.co-

pendency of the other application: whether they were in’ fact

awate of the copendency of-the other application ; whether they -

had any duty to be aware of the pendency of the other applica-

tion; whether the application for the ’408 was in a different -divi-

+ sion during the entire period it was pending before the United ,

‘ States Patent Office than. the application for ’407.”

But plaintiffs: make no allegations as to these questions and neither

side has submitted supporting material for any- position. . Therefore

the Court makes no finding on these matters, __

20. Plaintiffs argue, supra n. 4, at page 16, that a copy of the

German patent was received in thé United States Patent Office on

June 7, 1946, and that it is reasonable to infer that the patent examiner

in charge of the 408 patent considered the German patent. This

Court, on the contrary, does not choose to make this inference.

/

eevee POR L Tite

. .A20 District Court Decision

Defendant alleges that component parts corresponding

to the components of the 407 patent were sold publicly as

early as 1953 and 1954, more than one year before the 408

patent application was filed in 1956.7" This is supported by

the admission of James D. Nunnally in his deposition and

not controyerted by plaintiffs either by allegation or by sup-

porting affidavits.“ saalitass herefore, pursuant to Rule 56(e) of

rip Memorenaun, supra, n. 6, aut p, 10; Reply, sot n. 6, at

pp. sai

2. Copies of defend: int’ sE xhibits CC-1 to CC-12 were filed on

May *. 1908 with defendant's Memorandum, supra, n. 6. Exhibits

CC-1 to CC-4 are drawings of various end pieces used in the turn-

buekle assembly of the 407 patent (and the 408 patent). Exhibits

CC-5 is asdrawing of the barrel used in the turnbuckle assembly of

the 407 patent: (and the 408 patent). Exhibit CC-5 is a drawing

of drawings of varidus clips. : |

In the deposition of James D. Nunnally, taken en November

15, 1967,’at pages 50-51, the following testimony is recorded:

©: Were.-parts stich as depicted by. Defendant’s Exhibit ““CC-5”

sold {n the year 1953?

A: It is entirely possible, and to the best of my recollection,

they were.

QO: Were they also sold in the year following, 1954?

ey ae f.

. x: * * * -

Q: Defendant’s Exhibit “CC.4” shows an approval date of

4/15/53. Were parts such as depicted in Defendant’s Exhibit

“CC-4" sold during the year 1958? :

A: Probably. °

Q: And those parts were cen sold in the year 1954?

A: TI believe so.

QO: Now, as to the parts shown | in Defendant's Exhibit “CC- * gh

showing approval date of April 15, 1953, were parts illustrated

in this exhibit sold in the year 1953?

A: To the best of my knowledge and - belief, they were * * *,

x 28 #

Q: To avoid bothering you from going to your other exhibits of

the “CC” series, and to those exhibits that bear an approval .

date of 1953, do you feel all of those parts —_— by those ex-

hibits were sold in the year 1953? -

Mr. CANTRELL [counsel for plaintiff] : W ould you. stop and

look at the drawings before you answer that question?

(Thereupon, the witness examines the drawings as re-

quested. )

A: With the exception of the clip.

‘ . ° - .

District. Court Decision | A21

the Federal Rules of Civil Procedure, this Court must as-—

sume that Mr. Nunnally’s statements are true2? This means -

that the components of the 407 patent were disclosed to the

public before the 408 patent was allegedly invented, so that.

the 407 patent can be considered as prior art.24 |

The next question is whether the 408 patent meets the

requirement of 35 U.S. ©. § 103. Section 103 provides that

a patent may not be obtained if, at the time the invention |

was made, the differences between the invention and the

prior art would have been obvious to a person having ordi-

nary skill in the art. It is proper for this Court to decide

this question on a motion for.summary judgment where its

- decision rests on facts as to which there is no dispute. Walker

v. General Motofs Corp., 362 F. 24°56 (9th Cir. 1966).

It is clear from inspection of the file wrapper, the speci-

‘fications, and the claims of the 407 patent that the compo- -

nents of the turnbuckle assembly described in the 408 patent

are essentially the same as the components of the turnbuckle

assembly of the 407 patent, except for the wire locking clip.”

23. Rule 56(e) of the Federal Rules of Civil Procedure sates

in part:

“When a motion for summary judgment is made and supported -

as’ provided in this rule, an adverse party may not rest upon the

mere allegations or denials of his pleading, but his response, by

affidavits, or as otherwise provided in this rule, must set forth

ee specific facts showing’ that there is a genuine issue for trial. If:

he does not so respond, summary judgment, if appropriate, shall

be entered against him.” et ne, .

24. Monroe Auto Equipment Co. v, Superior Industries, Inc.,

332 F. 2d 473 (9th Cir. 1964), cert. denied 379 U. S. 901, 85 S. Ce.

190, 3 L. Ed. 2d 175 (1964). - . |

: 25. For example, comparing thé claims of the 407 patent with

.the claims of the 408 patient :

407 Patent-Claim 1 408 Patent-Claims 5-7

| [end pieces]’ es

In a turnbuckle assembly, an ex- In a turnbuckle assembly which

ternally threaded longitudinally includes * * * threaded rod ends

grooved member * * * said rod ends being respec-

Aaa tively longitudinally grooved

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A232 District Coitrt Decision ee

The 408 patent substitutes a diferent wire locking clip for

the wire locking élip used in the 407 patent. Thore-is no-

difference between the end pieces used in the 407 patent and

those used in the 408 patent". There is no essential dif-

ference between the barrels used in the 407 patent and those

used in the 408 patent; plaintiffs state that the only differ-

once between the barrels depicted in the 407 patent and those.

‘depieted in the 408 patent is the length of the longitudinal

KTOOVES, si Howey or, the specifications and ¢ ‘laims of the 407

‘25. (eont.) [barrel]

an internally” threaded, longitu. a hollow, internally threaded bar-

dinally grooved, hollow, barrel. rel * * * said barrel having. com-

like member bemg apertured ine plementary © grooves — registered

termediate the length of said with said rod end BrOOVES, said

barrel-like member to fort at barrel being transversely aper-

least one transverse aperture com. tured) substantially. at its longi-

muticating from exterior said tudinal center.

barrel-like member into the hol-

low interior thereof : ‘

| barrel-end picces relationship |

-stid members being threadedly. threaded rod ends threadedly en-

engaged with their longitudinal «gaged with said barrel * * * said

grooves in register. barrel having = complementary

grooves regtstered with said rod

end grooves,

20. This can be seen simply | by inspection of the diagrams ac-

companying each of the patents. ‘ompare Vig. 9 of the 407 patent

diagram, Appendix C, with Mig. 2 of the 408 patent diagram, Ap-

“

ener D.

; 27. Plaintiffs’ Answers to Citoniient’s Interrog: tories, filed Au-

gust . 23, 1908: |

Inte rrogatory Nao. 103 :

“Please describe in detail and specifically each ilifference between

the barrel of the turnbuckle assembly disclosed in U. S. Patent

No. 2.843.408 and thé barrel of the turnbuckle assembly dis-

closed in U.S. Patent No. 2,843,408, as asserted by plaintiffs in

Exhibit “C” to Plaintiffs’ Answers to Certain ee

Propounded by Defendant, filed herein July 24, 1968.”

Answer

“Plaintiffs assume that defendant intends that one of the patent

numbers mentioned in this interrogatory be 2,843,407, and their

answer is based upon such an assumption :

The longitudinal grooves in the barrel of 2,843,408 are

longer than the longitudinal grooves in the barrel of 2,843,407.”

eo we sical ee a0 ae

.

District Court Decision A23

patent do not limit the length of the longitudinal barrel

‘Brooves as depicted in the.407 patent diagram,” and in faet

the barrels sold ig 1953-195. ippear to have longitudinal __

grooves: extending the full length of the barrel threads,

exactly like the 408 patent barrels.2 ;

Actually, without any modifieation-at all, one could take

a 407 patent-clip and use it on a'408 patent barrel and end

pieces and one would then have the 407 patent turnbuckle

assembly. Conversely, one could take a 408 patent-clip and

use it with the 407 patent-barrel and end pieces (perhaps

lengthening the longitudinal groove in the barrel, if neces-

Ee

sary, fo make it like the barrels sold in 1953-1954) and one

would then have the 408 patent turnbuckle assembly.” . The

only difference in the manner in which the elements cooper-

ate among themselves in the 407 patent assembly and in the °

28. See the 407 patent claim in n. 25, supra. ata

29. Defendant’s Exhibit CC-5, supra wr, 22, is a diagram of the

barrel sold in the United States jn 1953. The diagram indicates-

that the longitudinal grooves run the full length of the ‘barrel. De-

fendant’s Exhibit EE-2 is a diagram of a barrel apparently used in

1953 and the diagram explicitly states: “Noté that slots rian entire

length of barrel * * *” .

Mr. Nunnally ‘gave the following testimony at his deposition,

supra, n. 22, at p.-83: _ : ;

Q: Are the barrels now manufactured by defendant in this action

basically. any different from the barrels of thee 200 and 300 Series

turnbuckles about which you have just testified ?

_A: No, sir. . ;

Q: Insofar as ‘the end parts are concerned, are there any dif-

ferences ? Re SE

A: There are some differences, but they were not pertinent to

this lawsuit. They are just engineering differences.

Q: So, basically, as I understand your testimony, the parts

now sold by defendant in this action are basically the same as.

the parts which you were offering for sale and disclosing to

others throughout the year 1953?

A: Except for the clip. aes

30. See Defendant’s Exhibit CC-10, which is plaintiffs’ diagram

of the 408 patent clip. The diagram explicitly states: “Swap on,

Lock’ WirE—to be used with Stuke 201 [407 patent, 482 patent] —

TURNBUCKLE BARRELS.”

BRET oat nto vies

sete nase

A24 District Court Decision ©

408 patent assembly lies in the fact that the 408 patent sub-

stitutes a different wire locking clip for the wire locking

clip of the 407- patent. 31

31. In Exhrbit “C” attached to Plaintiffs’ Answers to Certain

Interrogatories Propounded by Defendant, filed on July 25, 1968,

plaintitts state :

“{ T]he individual elements of the turnbuckle assembly ‘disclosed

in "408 cooperate between and | ‘among each other in a different

and superior way to the individual elements of the turfibuckle

assembly shown m "407,.with the ‘408 turtbuckle assembly pro-

ducing a far superior result to that produced: by (’407.”

In all statements by plaintiffs, however, it appears that the dif-

ferences in the operation of the-408 patent turnbuckle assembly over

the operation of the 407 patent turnbuckle assembly are the result

of nothing more than the differences in the wire locking clip. Exam-

ining the file w rappers of the 407 patent and the 408 patent separately,

because neither mentions the other, one finds that the file wrapper

of the 407 patent indjcates that with respect to claims 14-21 (turn-

buckle assembly claims) the essential teatures on which Stukenborg

clainied 1 invention were aspects only of the locking clip:

“For two fundamental reasons, the claims now under discussion

‘clearly seem to distinguish’ from Stukenborg, -cited [482 patent].

First, since in Stukenborg, cited, there is no purpose or sugges-

tion of providing the reverSely bent arcuate. hook member [of’

the clip} * * *. On the contrary, here, Applicant * * * has

provided the resilient /hook portion [of the clip] which is capable

of introduction into the barrel aperture, and which upon in-

_ troduction into the interior of the barrel is of a diameter greater

than the diameter of the aperture so that the‘hook member will

positively engage the interior of tlie barrel against the removal

- of the anchor from the barrel aperture..

- In the second place, the claims * * * recite that the anchor

[of the clip] inwardly extends away from the stem portion [ of

the clip], the hook .Jof the clip] is arcuately’ bent to project out-

wardly and lie alongside in spaced-relation to the anchor porfion,

and that the hook has an outwardly facing tip, and further that

this outwardly facing tip is in engagement with the interior of

the barrel. It is plain that here is structure [clip] which has .

no counterpart or suggestion in Stukenborg, cited, and which, -

operating upon a completely new principle of operation, is effec-

tive to accomplish the purpose of locking the threaded members

against rotation in a manner: quite distinctive and different from

that of Stukenborg, cited.” Letter from Stukenborg to Patent

Office, received March 25, 1957, pp. 6-7.

District Court Decision ae — A25.°

a (cont.)

Similarly, an examination of ‘the 408 patent file wrapper reveals

‘that with respect to claims 5-7, Stukenborg relied on the following

features for his claims of invention ove

.

r the prior art, and it appears

that all of the features mentioned to distinguish the 408 patent from .

.the 482 patent are solely attributable

If. both the 407 and: 408 patents differ

to the differences in the clip.

from the 482’ patent only be-

cause of their different clips, then it would seem that they differ from

each other only beéause of their clips:

“The remaining claims 5-7, inclusive, * * * are particularly

characterized by the acute angularity of the intersection of the

anchor [of the clip] with the exte

rnal stem: [of the elip] * * *,

“It will be seen that the anchor [of the clip] of the present

invention goes considerably further than.the anchor 33 of Stuken-

borg, cited [the 482 patent], in effecting “the end result ‘* *. *

With the present device it

is possible, regardless of. the

size of the turnbuckle assembly to be employed in aircraft, that

wire of uniform diameter [for the

clip! may be employed. The—

chance and ‘the opportunity of error in-the installation -of the

locking clips is substantially eliminated. Heretofore a wide: °

variety and category of sizes of lock clips have been necessary?

- Under the use of the present invention, but two sizes are required

to cover the entire range of turnbuckle assemblies’ which are

employed in aircraft. [It would seem that the 407 patent clip

-would also have this attribute. ]

The features of the present

invention cause the external portions of the lock clip comprising ©

the stem to closely hug the barrel

eliminate protuberantes [of the cli

operation, and which might be s

of the turnbuckle, and.to thus. «

p] which might interfere with

nagged or otherwise engaged

during operation, thus eliminating ‘substantially the possibility

of accidental removal of the lock

iency of the device [clip] and th

clip. Additionally, the resii-

€ arrangement of the locking |

leg [of the clip] relative to the stem [of the clip], including the

crossover and extent of the leg to

substantially the length of the

stem, causes the locking portion [of the clip] to closely hug and

snugly ‘fit against the slots or grooves formed in the interior

of the assembly, thus enhancing

the positioning of the device

and the arrangement of same to prevent-the relative rotation of

the turnbuckle barrel to the terminal rods.” Letter from Stuken-

borg to Patent Office, received Se

ptember 6, 1957, pp. 8-11.

It is‘also apparent from the letters and‘ testimony of Mr. Nun-

nally that the only differences between

. of the elements in the 407 ‘patent ass

the operation and relationship |

embly and in the 408 patent

assembly .are attributable to the different clips used. In a letter

submitted as Defendant’s Exhibit MM

. Mr. Nunnally wrote to Mr.

Burch of the Navy Department on May 26, 1955, concerning the

change in the 408 patent clips :

APY pee,

.

A tl a lp +t em

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/

A2%6 District Co urt I ecision

The barrel in the German’ patent assembly utilizes a

. longitudinal locking groove extending the full length of the:

threads,” like the 408 patent barrel and like the barrels.

sold in 1953-1954." Again, the barrel and the end pieces

are not materially different from those of the 408 patent.

assembly... Thus, with slight modification one could take

the barrel and end pieces from the German patent and use

the 408 patent clip and: one would then have the 408 patent

turnbuckle assembly. Conversely, with slight modification

ene could take the barrel and end. pieces from the 408 patent

and use the German patent clip and one would then have

' the German patent assembly.

This Court also finds that the complete 408 patent

turnbuckle assembly is similar to the 482 patent turnbuckle

ibly; Again, the principal difference is the substitu-

types of barrels disclosed in the 482 patent. One uses a

radial locking groove at the ends of the barrel instead of

a longitudinal locking groove along the threads of the bar-

rel. But the.other barrel depicted uses a longitudinal

31. (cont. ) ;

, The clips have now been redesigned to incorporate a slight

change in their shapes which we consider an enormous. improve-

‘ment, since the new shape has all of the fine characteristics of

strength and security of the former clips, plus quite an appreci-

able saving in time of installation.” [emphasis added]

In his deposition, supra, n. 22, at pp. 73-74, Mr. Nunnally affirmed

his statements in the letter. The foregoing statement of Mr. Nun-

nally was emphasized by defendant in its /emorandum, supra, n. 6,

at pp. shy and has not been qualified or contradicted by plaintiffs.

32. See Appendix A.

33. Comparing the barrels in the 407 patent L Appendix C) and

the 408 patent (Appendix D) with the barrel in the Gérman patent ,

(Appendix A), it appears that the barrel in the German patent does

not have‘a raised central band as in the 407 and 408 patents. But

‘ the latter patents do not claim the raised ‘central barid on the barrel

as an essential feature of the patents, although it appears that /the

raised central band of the barrel provides tighter and more sécure

Jocking of the clip and par structural strength at the central

aperture of the barrel.

telat

fon of one wire locking clip for another. There are two.

+ ieewoi ve

~s

District Court Decision . . AT

‘Sroove,™ so thatthe assembly described in claims 3, 5, and

6 of the 482 patent * js the same as the 408 patent assem-

bly except for the differences in ‘the wire locking clips. -

Therefore, before the filing of the 408 ‘patent applica-

tion, there were at least three turnbucklé assemblies: in the.

prior art, all of which used longitudinal. grooves in the

threads of the barrels and end pieces and a wire locking |

clip that passed through the longitudinal grooves to lock

the assembly and was anchored to the barrel in whole or in’

part at the central aperture of the barrel. “Fhe-components

of these three turnbuckle assemblies were essentially the

34. Ghese two types of grooved barrels are described in the

- Specjficatfons of the 482 patent at Column ‘3, lines 43-57. A barrel

with both types of £roove is depicted-in defendant’s Exhibit EE-2.

. 35. For example, claim 3 of the 482 patent reads as follows:

“A turnbuckle assembly, including an internally threaded.

; said rod and sleeve. grooves.” ae

The italicized portion is the only part of the claitn which can’t be

read onto the 408 patent turnbuckle assembly. .The Court of Claims

found this claim and claim 5, below, to be invalid over the German |

patent. 372 F. 2d at 502. . : :

Claim 5 of the 482 patent also could be read onto the 408 patent

and vice-versa : : :

a

ad

bad - . sad onl mabe 2a LGR SE APIA Mas Bee PF sy

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A28 — .. » District Court Decision ————

‘same except for the wire locking. clips. By using the ap-

propriate wire locking clip one could thereby obtain any

one of these three ; assemblies without signific intly changing

oa _ the barrel or end pieces: The operational utility and the

reliability may have been different for each one of these

three assemblies, but the source of the difference lay -i

the wire locking clip.** — It clearly. was obvious to anyone

skilled in-the art at‘the time Stukenborg filed the applica-

tion for the 408 patent that using grooved barrels and end

pieces and a wire locking clip was perhaps | the best, simple

*-way to make a locking turnbuckle assembly.’\ It was also

obvious that the design of the clip would largely ‘determine

, . how well the turnbuckle assembly would operate in any -

| ee _ given application.

rag I: When Stukenborg allegedly invented what bee: ame the

“408 patent, he did not take old components and add a new

element to cause the old components to achieve a different

or unexpected. result. He simply improved thé wire clip

and substituted the improved clip for the older clips, as

had been. done inthe 482 patent and 407 patent over -the,

- German patent. - Substituting an improved element in an

e . old combination but still using the same basic elements

(barrel, end pieces, wire locking clip) as was used in the

old combination, without adding another element, ito ac-

complish the same -result, does not give plaintiffs a right

to. claim a pafent monopoly on the whole combination.7

< 5 1

a 36. Accordingly, the specifications for the 408 patent state:

| * “This invention relates to certain new and useful improvements

in -means for locking rotatably engaged members, such as turn-

a buckle. barrels and rod ends or terminals joined by such tutn-

: = buckles against relative rotation * * *,.

3 , The present invention is particularly characterized by the

j improvements residing in the lock member or clip * * *. »

The principal object of the present invention is to provide

‘a new and novel lock memiber or clip for. use with turnbuckle.

assemblies.”

37. Plaintiffs rely an the opinion in ‘earl v. sie fs supra,

n. 13, wherein the court stated at p. 590:

.

—

Ga a IE GAO

me, ' District Court Decision . ~ A29

Lincoln Engineering Co. of Tlinois v. Stewart-Warner

. Corp., 303 U. 8. 545, 58 S. Ct. 662, 82 L. Ed.-1008 (1938) ;

Bassick Manufacturing Co. v. -R. M. Hollingshead, 298

U.S. 415, 568. Ct. 787, 80 L. Ed. 1251 (1936); Evans Prod. .

ucts Co. v. Preco Incorporated; 378 F, 2d 191 (9th Cir.

1967) ; Goodman vy. Super Mold Corp. of. California, 103

F, 2d 474 (9th Cir, 1939). Even if it is assumed that the

improved clip claimed in the 408 patent is inventive and

patentable over the old clips this still does not give plain-

tiffs a right to claim a monopoly on the whole combination.

In re Tibony, 241 F. 2d 953, 44 CCPA 801 (1957).

Plaintiffs argue that this Court must give a presump-

tion of validity to the patent duly issted by the Patent Of-

fice, in accordance with 35 U. S. C. § 282. .It should be

first noted that contrary, to plaintiffs’ contentions, it is

37. (cont. ) oe

“We think the root of the district court’s error was in consider-:

ing Chernivsky’s claim 1; upon which his claims 2- and 3 rest,

against the ‘prior art piece by piece instead of considering the

device , totally, without properly applying the well-established

* principle that a-combination’ of old. elements in a manner that

is unobvious to one skillef in the trade and which produces a _

new and useful result may be patented. [citations omitted].

Since a combination of old elements alone ‘may be enough. to

constitute a patentable device, the addition. of a new-element to

the combination should .not; as the district court seemed to

conclude, result in a limitation of the claims to the new element.”

The patent in suit, however, does not fit the situation described in

the above quotation. Here Stukenborg did not eclectically put to-

gether old elements into a combination that was previously unknown

in the art, nor did he put together old elements into a new combina-

tion and then add one new. element, as occurred. apparently, in the

Welsh case.’ Instead, Stukenborg took an old combination and

merely improved one of the old elements.

This case seems more ‘analogous and more properly described

by the preceding paragraph in the Welsh opinion, also on p. 590:

“In those cases the patented device contained only a- single, | -

Jimited improvement over a preexisting device in the prior art,

‘and a broader construction of the claims ‘than that allowed by

the court would have rendered the patent invalid on the prior

art..- In the case before us, on the other hand, there was no single

device in the prior art which embodied, except for the coupling

. device, all of the elements of the Chernivsky device.” >

ab thiegtdes tar

La aah ea Phra ow“

A30 | District Court Decision

not at all clear. from the file wrapper of the 408 patent or

the specifications or claims of the 408 patent that the‘patent

examiner considered claims 5-7 to be combination claims

for the complete turnbuckle assembly. Even more impor-

tant, this Court finds that when the German. patent and

especially the 407 patent are considered with the 482 patent

as prior art, the turnbuckle assembly of the 408 patent

would not-be a patentable combination. But the 408 patent

- . does not list the German patent nor the 407 patent as

references, and it has not otherwise been shown that they

were considered by the patent,examiner.“* Thus any pre-

-sumption of validity is rebutted.*”

Plaintiffs also assert that the decision of the Court of

Claims, supra, upholding the’ 408 patent as a. combination

patent, should be given great weight here. Although the

decision of the Court. of Claims is not res judicata as to

this defendant, this Court would give that decision con-

siderable weight, :in order to avoid inéonsistent decisions.* ,

But it seems that although the Court of Claims was aware

of the 482 patent, it did not indicate that it used the 482

patent as prior art to test the validity of the 408 patent.*”

The Court of Claims did considér the \German patent

against the 408 patent, but, in ruling on\ \claims 5-7, the

Court found only that the 408 patent clip would not have

been obvious from the German patent clip; ‘the Court ap-

parently did not consider that-there is an additional ques-

tion of whether the combination was patentable in light

38. See nn. 19, 20, and the accompanying text, sipra: .

39. Monroe Auto or. Co. v. Superior Industries, ven ‘.

supra, n. 24. . .

40. Counsel for plaintiffs, at the hearing on this motion pan

— summary judgment, supra, n. 3, at R. T. 28, stated:

“As-a matter of fact, your Honor, at the final argument in the

Court of Claims they had an enlargement of the '482 patent col-

ored and on an easel just exactly as you see the one befre you

here. That was argued by counsel for the Government bet ore the

Court of Claims, - they didn’t pay any attention to it.”

.

District Court Decision © = ABA

of the German patent, which also used a resilient wire

clip.*~ Of greater importance, however, is’ the apparent

fact that the Court of Claims was either unaware of the 407.

patent or did not consider it.*? For the foregoing reasons

and especially because the Court of Claims.did not take

into account the 407 patent, the most important piece of

prior art for tasting the validity of the 408 patent, this —

Court will not consider the Court of Claims decision as

binding on the question of whether plaintiffs have a valid

patent on the whole turnbuckle assembly, e a4

Plaintiffs assert that affidavits of. engineering experts,

especially those of Boese and Whelan, support the conten-

tion that the 408 patent was not obvious to one skilled in |

the art at the time of. the alleged invention.* The Court

finds that the affidavits do not merit that conclusion. <As-

suming the statements in the affidavits to be true, they

do not reach the issue of whether the 408 patent turnbuckle

41. In its holding the Court of Claims. stated, 372 F. 2d‘ at 502:

“With reference to the ’408 patent ‘the defendant contends that

it would have been obvious to one skilled in the art in 1956 to

form the clip disclosed in‘the German patent in the same manner

‘as disclosed and claimed in the ’408 patent. * * +>"

To modify the strip fastener disclosed in the Tinnerman

patent would require that the fastener be substantially changed

in shape and structure and then taken from arf unanalogous art

and applied in cooperation with the other turnbuckle components

in the same. manner as disclosed in the ’408 patent. Such a

modification would not have-been_ obvious to one skilled in the

art in 1956 unless the ’408 patent was used as a blueprint. Both

the German and Tinnerman patents isstied in 1944, which is 12

years prior to the time that Stukenborg, after making many

modifications, developed the commercially successful invention’

recited in the ’408 patent. It is concluded that claims 5, 6, and

7 of the "408 patent are valid.” [emphasis added].

42. Plaintiffs’ counsel seems to admit that the Court of Claims

was not aware of the 407 patent for he stated in court, n. 3, supra, .

at R. T. 29: ‘ :

“Now it is true that the ’407 patent was not before the Court

of Claims.” :

43. Plaintiffs’ Memorandum, n. 4, supra, pp. 8-11.

patent to correspond to the clip disclosed and claimed in the "408 °

»

A Re

‘4 ¥. ADEE Sie es sic

A382 ’ District Court Decision

assembly was uon-obvious from the 482 patent turnbuckle

assembly, the 407 patent turnbuckle assembly, and the

German patent turnbuckle assembly. The affidavits merely

indicate that the ‘*Stukelock’’ turnbuckle met with great

commercial success and was found to be superior to the

old wire-lock, turnbuekle."! But the affiants use the term

“Stukelock’? without distinguishing between the 482 patent

turnbuckle assembly, the 407 patent turnbuckle, assembly,

and the 408 patent turnbuekle assembly, all of which were

known as ‘*Stukelock’? turnbuekles. “And none of the affi-

~davits indicates that the 408 patent ‘*Stukeloek’’ turnbuckle

assembly was not obvious from the 407 patent ‘*Stukelock”’

turnbuckle assembly and the 482 patent ‘*Stukelock’? turn-

buckle assembly.”

Plaintiff Stukehnborg may have made a significant. con-

tribution when he, redesigned his wire locking clip into

the shape shown in the 408 patent. Certainly the success

of the turnbuckle. assembly using: the 408 patent clip is

some cireumstantial evidence that it was new and useful.

But this Court finds that it would have been obvious to any-

one skilled in the art that one might change the shape of

the wire clip used in the 407 patent or the 482 patent or the

German patent and obtain a turnbuckle assembly that would

be more easily and securely locked. -The manner in which

the clip should have been changed might not have been

obvious. But the fact that Stukenborg found a way to

improve the clip so that it would be easier to install, less

likely to fail, and easier to remove should rightfully give

hima legal claim to.no more than the. improved clip; it

should not ‘give him a right to claim a monopoly on the old -

environment in which the improved clip operates. There-

44. A diagram of the wiré-lock turnbuckle assembly is presented

herein as Appendix E.

45. See Defendant’ s Reply, supra, n. 6 at pp. 68.

District Court Decision , A33

fore, if the language of claims 5-7 were to be construed

as claiming the 408 turnbuckle assembly as a combination,

then claims 5-7 would be invalid on the grounds of -over-

claiming. Great Atlantic & Pacific Tea Co. v. Super-

markets Equipment Corp., 340.U. S. 147, 150, 71 S. Ct. 127,

129, 95° L. Ed. 162 (1950). | ‘

It is ordered that deféendant’s motion for partial sum-

“mary judgment is granted.

‘. deiat pete tee _ if

Pager gee reserve: 95 aoa etry

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A34

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‘APPENDIX A.

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“DOUGLAS AiRce

COMPANY

APPENDIX B

‘ . .

BE Ar FLO LEELA RSE tly

A36

July 15, 19538 . Le. stuKeNnsorc 2,843,407

LATCH FOR ANTI-ROTATIONAL LOCK KEANS

Piled Dec. 10, 1953

c| . Lows is limaneatnns

Uttar fordend Net Yoh

rs . ‘

4g

"APPENDIX ¢ |

A37-

Jwy 13, 1528

ON a SS

we: Lie

c= au”, SSS

Lil,

~y Ls) RAN S b> +

L. © STUKENBORG

LOCK FOR TURNBUCKLES

’ Filed June 27, 1956

APPENDIX D

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Of Dass oA pia Tee :

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-A38

e WRAPPED TURIUCKLD ASSTIDLY i

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amt: Bans? we, Ga. ¢

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ae A,

} IT ie es <a

ape mj & tke pe)

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page . : \ et al,!

+ . Pern re.

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Y

Opn:

APPENDIX EC

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4

“* s

33

YORE etree mens Rewer omy Ce tat sa ae we