# Petition for Writ of Certiorari — Stukenborg v. Teledyne, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385605_1326%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1971 - **Citation:** 404 U.S. 852 ## Text 2 pacman , T a — tou, US, | ip } mr ' JUL 10 1971 Hy E. ROBERT. SEAVER, CLERK Supreme Court ft the Unite States al | 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 - 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 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. " 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 ’ Ps . SA 5 A ARIS A fe Ce A34 Zu der Patentschrift T47 256 ABS. : (Sehnitt: A-B) ‘APPENDIX A. 2,580,482 F a a ie ae 7 es a an VéE $2 va INVENTOR. TUHENSO® LDV OTTER eno a) ee aly Louw oes o / Z v L. ©. STUKENBORG ETAL Jan..1, 1952 TUANBUCKLE Locx Filed-July 12, 2345 ALT » Ine, “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 bs a Of Dass oA pia Tee : . — -A38 e WRAPPED TURIUCKLD ASSTIDLY i Trwe-er2 ow “wereats — amt: Bans? we, Ga. ¢ . ff pb tee me ae A, } IT ie es