Appendix — Bobertz v. General Motors Corp.

APPENDIX

IN THE DISTRICT COURT OF THE UNITED STATES

FOR THE EASTERN DISTRICT OF MICHIGAN

SOUTHERN DIVISION

No. 9399

Yustav H. Boserrz, Jn., Plaintiff,

Vv.

GeneraL Morors Corporation, Defendant.

Order Granting Defendant's Motion for Summary Judgment

Plaintiff sues for infringement of Patent .o. 1,911,600

relating to improvement in automobile hoods. Defendant

denies infringement and attacks validity of the patent for

lack of novelty and patentable invention. Issue was joined,

pre-trial hearing had and a pre-trial order entered defin-

ing the issues, following which exhaustive discovery pro-

ceedings ensued by both parties.

Defendant filed motion for summary judgment under

Rule 56, claiming absence of any genuine issue of material

fact. Oral argument was had and all exhibits were made

available to the court, including defendant’s accused de-

vice. Briefs were filed fully covering the issues involved.

Ordinarily, courts are reluctant to decide important is-

sues by summary judgment because of the lack of a record

adequate to explain the issues of fact and law. Parke,

Davis & Co. v. American Cyanamid Co. et al., (6 Cir.),

207 F. 2d 571, citing Estepp v. Norfolk & W. Ry. Co., (6

Cir.), 192 F. 2d 889. In the latter, a personal injury case,

and in Begnaud et al v. White, (6 Cir.), 170 F. 9d 323, a

contract case, the court ruled that where a genuine issue of

material fact exists summary judgment should not be

vranted, but in the Parke, Davis & Co. v. American

Cyanamid Co. et al. case, supra, a patent case, the court

said, p. 573, ‘*but here the issues are clarified by extensive

interrogatories filed by both parties and answe red fully”’

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Both parties in this case resorted to extensive discovery

proceedings, filing of affidavits and exhibits, and making

admissions. The court also had the benefit of the Patent

Office file wrapper showing the history of the prosecution

of this patent. The thoroughness of the pre-trial activities

of both parties resulted in the elimination of any genuine

issue of material fact in dispute. Under such cireumstances

it has been held that where no factual issues are present

and where the patents and products involved are suff-

ciently simple to make expert testimony unnecessary, dis-

position under Rule 56 is proper. Bridgeport Brass Co.

v. Bostwick Leboratories, (2 Cir.), 181 F. 2d 315, 316,

319; Steigleder v. Eberhard Faber Pencil Co. et al. (1

Cir.), 176 F. 2d 604, certiorari denied, 338 U.S. 893;

Vulean Corp. y. International Shoe Machine Corp., D.C.D.

Mass., 68 F. Supp. 990, affirmed 1 Cir., 158 F. 2d 520,

certiorari denied, 330 U.S. 825, 67 S. Ct. 868, 91 L. Ed.

1275; Alex Lee Wallau, Ine. vy. J. W. Landenberger & (o.,

121 F. Supp. 555, 556. Defendant’s accused hood is a

partially transparent counterpart of the regular steel hood

used in all of defendant’s 1949 Oldsmobile ‘‘Rocket En-

gine’’ automobiles. Both hoods were available to the court

for examination and comparison with plaintiff’s hood of

the claimed invention, which in Figure 2 of the patent

drawings follows closely the automobile hood structure

of defendant’s 1932 Chevrolet automobile.

In Steigleder v. Eberhard Faber Pencil Co. et al. ease,

supra, the court in approving disposition of certain pat-

ent cases under Rule 56 said: ‘*Where it is apparent that

there is no genuine issue of fact bearing on infringement,

and the structure and mode of operation of the aceused de-

vice are such that they may be readily comprehended by

the court, and compared with the invention described and

claimed in the patent, without the need of technical ex-

planation by the testimony of expert witnesses, then the

court, if satisfied that there is no infringement, should

give summary judgment for the defendant, instead of

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subjecting the parties to the expense of a trial.’’ To the

same effect Smith v. General Foundry Mach. Co., (4 Cir),

174 F. 2d 147, certiorari denied, 338 U.S. 869.

The five combination claims of the patent in suit are

directed to an automobile hood made of transparent mate-

rial, consisting of two vertical members, and either one or

two horizontal members with a plurality of longitudinally

extending transparent reinforcing means connecting the

adjoining edges of said members to form a unitary strue-

ture therefrom, and securing means adapted to coact with

a hold-down latch on the vehicle body to removably secure

the hood to the vehicle body. The specifications state the

object of the patent to be an invention to provide an auto-

mobile hood formed of transparent material, which per-

mits full visibility of an engine of a motor vehicle at all

times. Claim 1 is representative.’ This transparent auto-

mobile hood would only temporarily replace the ordinary

hood and was not intended for regular use in an automo-

bile. The novelty of this invention is stated in the speci-

fieations to reside in the transparency of the top and sides

of the automobile hood, for display or study purposes,

enabling the observer full visibility of the engine.

The specifications also state that the automobile hood

of the invention may be formed of a single sheet of trans-

parent material, or a plurality of independent sheets of

such material, and while it is also stated in the specifica-

tions that the applicants for the patent do not desire to

be limited to any type of hood fastening means, nor to a

particular shape or configuration of such a hood, but de-

sire to avail themselves of all changes in the scope of

1 An automobile hood including two transparent vertical mem-

bers, two substantially horizontal transparent members, a plurality

of longitudinally extending transparent reinforcing means con-

necting the adjoining edges of said members to form a unitary

structure therefrom, and securing means adapted to coact with

a hold-down latch on the vehicle body to removably secure the said

hood to the vehicle body.

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the appended claims, it is clear upon examination of the

file wrapper history of the prosecution of this patent, and

the language of the claims of the patent, that the claims

finally granted are expressly limited to an automobile

hood of several pieces made of any transparent material

and joined together by transparent reinforcing means to

form a unitary structure.

The original application filed in the Patent Office had

seven claims, all rejected by the Patent Office. A total of

nine new claims were filed during subsequent proceedings

in the Patent Office, of which five were finally allowed.

These rejected claims included language relating to

‘transparent means for enclosing the portion of the ve-

hicle between the radiator and the cowl’’; a ‘‘transparent

automobile hood formed of transparent material’’; and

later, ‘‘of sheet celluloid’’. The rejected claims presented

nothing patentable over Rumpler (German) +#+379,379

(1923) which, in claims 1 and 4, deseribe a motor vehicle

hood constructed from transparent celluloid. No inven-

tion is claimed on the latching means, and the substitu-

tion of the temporary hood in place of the conventional

hood in an automobile is taught by Martin +1,382,959

(1921).

As pointed out by the Patent Office, the combination of

a cowl, radiator shell, a hood, and the latching means for

the hood, is an old one, as disclosed in Martin. No inven-

tion would be involved in substituting sheet celluloid for

the wire mesh covering in Martin, in view of the trans-

parent hood shown in Rumpler, the moulded celluloid

used in Rumpler being equivalent to sheet celluloid, and

the use, broadly, of transparent reinforcing means is not

a patentable distinction, since an ordinary prudent me-

chanie would naturally locate the reinforcing means to

conform with the design of the vehicle body. The reinfore-

ing rods in Martin are adapted to conform with the de-

sign of the vehicle body, as stated by the Patent Office,

and afford no basis for a patentable invention.

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The patent was finally allowed only when the claims

were presented in the specific language suggested by the

Examiner, limiting the grant to the vertical and horizontal

transparent members and reinforcing means disposed to

conform the body design of the motor vehicle upon which

the hood is placed, with latching means on the vehicle body.

The claims of the patent do not disclose the nature of

the transparent material of which the hood is made, and

although it is stated in the specifications that the hood

of the invention may be formed by a single sheet of trans-

parent material or a plurality of independent sheets of

such material, the Patent Office repeatedly and _ finally

rejected claims for a one-piece transparent hood, in view

of Rumpler whose patent disclosed an automobile hood of

transparent celluloid.

In 1949 defendant caused to be made and distributed

to its Oldsmobile dealers a quantity of ‘‘plexiglas’’ trans-

parent automobile hoods made of sheet plastic material,

to be used in displaying and demonstrating its Oldsmobile

“Rocket Engine’’ and other parts of an automobile usually

located under the hood, without the necessity of raising

the hood for each individual display or demonstration.

This hood was made of a single sheet of material variously

referred to as plexiglas, celluloid, and plastic. The trans-

parent portion, in the center of the hood covers about two-

thirds of its surface.

The claims of plaintiff's patent are specific and limited

to a transparent hood consisting of separate vertical and

horizontal parts joined together by reinforcing means,

in order to form a unitary structure. Defendant’s ac-

cused hood is made in one piece, with six ordinary serew-

fastenings openings for attachment to the body and chassis

of the car, without separate vertical members and without

any reinforcing means connecting together the several

pieces of transparent material comprising the structure

of the patent.

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During the prosecution of his application in the Patent

Office plaintiff cancelled claims sufficiently broad in scope

to cover the one-piece hood which was made of a single

sheet of transparent plastic and took the claims of the

patent which are specific to the plural-piece hood as illus-

trated in Figures 1 and 2 of the patent, with the reinfore-

ing ribs connecting the individual members. By cancelling

his origina] claims plaintiff created an express limitation

relating to the inventive step, and cannot now be _per-

mitted to depart from the plain meaning of the language

he adopted or to claim from such language a broad and

generic construction. A. O. Smith Corporation vy. Lincoln

Electrie Co., (6 Cir.), 82 F. 2d 226, 229. In determining

the scope of a patent, intent and inventor’s own appraisal

of the nature of the invention are important; that which

is not literally within a claim does not infringe. Directo-

plate Corp. v. Donaldson Lithographing Co., (6 Cir.), 51

F. 2d 199, 202. Having finally drawn his claims narrowly

to avoid the prior art and obtain allowance of the claims,

plaintiff cannot now attribute a broader construction to

the words of his claims. Falkenberg v. Golding et al., (7

Cir.), 195 F. 2d 482. Plaintiff’s claims must be read in

the light of the invention disclosed and cannot be given

a construction broader than the teachings of his patent

as shown by the claims allowed. Ford Motor Co. vy. Gordon

Form Lathe Co., (6 Cir.), 87 F. 2d 390, 392: Blane vy.

Curtis, (6 Cir.), 119 F. 2d 395, 397.

In Midland Steel Products v. Clark Equipment Co., (6

Cir.), 174 F. 2d 541, 545, the court quotes from D’Arey

Spring Co. v. Marshall Ventilated Mattress Co., (6 Cir.),

259 F. 236, 240, 241, ‘‘* * * where the claim defines an ele-

ment in terms of its form, material, location or function,

thereby apparently creating an express limitation, where

that limitation pertains to the inventive step rather than

to its mere environment, and where it imports a substan-

tial function which the patentee considered of importance

to his invention, the court cannot be permitted to say that

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other forms, which the inventor thus declared not equiva-

lent to what he claimed as his invention, are nevertheless

to be treated as equivalent, even though the court may

conclude that his actual invention was of a scope which

would have permitted the broader equivalency.”’, citing

R. M. Hollingshead Co, y. Bassiek Mfg, Co., (6 Cir.), 73

FP. 2d 543, 548; Firestone Tire & Rubber Co. v. United

States Rubber Co., (6 Cir.), 79 F. 2d 948, 955; United

Shoe Machinery Corp. v. O'Donnell Rubber Products Co.,

(6 Cir.), 84 F. 2d 383, 386; Shearer v. Atlas Radio Co., (6

Cir), 04 F. 2d 304, 306; A. O. Smith Corporation v. Lincoln

Electric Co., (6 Cir.), 82 F. 2d 226, 229.’ See also Whitman

et al. vy. Andrus, (6 Cir.), 194 F. 2d 270.

When claims are rejected and withdrawn while inven-

tion is pending in the Patent Office the patentee is estopped

to contend that the allowed claims should be given the

came breadth and interpretation as the abandoned claims.

Baker-Cammack Hosiery Mills v. Davis Co., (4 Cir.), 181

F.2d 550, 563: Exhibit Supply Co. v. Ace Patents Corp.,

315 U.S. 126, 136. In the case of Schriber-Schroth Co. v.

(Cleveland Trust Co., 311 U.S. 211, 220 the court said: ‘‘Tt

is a rule of patent construction consistently observed that

aclaim in a patent as allowed must be read and interpreted

with reference to claims that have been cancelled or re-

jected, and the claims allowed cannot by construction be

read to cover what was thus eliminated from the patent.”’

And. in Smith v. Magie City Kennel Club, Ine., 282 U.S.

784.790 the Supreme Court stated the rule as follows:

“The applicant having limited his claim by amendment and

accepted a patent, brings himself within the rules that if

the claim to a combination be restricted to specified ele-

ments, all must be regarded as material, and that limita-

tions imposed by the inventor, especially such as were

introduced into an application after it had heen persist-

ently rejected, must be strictly construed against the in-

ventor and looked upon as diselaimers. Sargent v. Hall

Safe & Lock Co., 114 U.S. 63, 86; Shepard v. Carrigan,

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supra, 598; Hubbell v. United States, supra, 85. The pat-

entee is thereafter estopped to claim the benefit of his

rejected claim or such a construction of his amended

claim as would be equivalent thereto. Morgan Envelope

Co. v. Albany Paper Co., 152 U.S. 425, 429.”’

Besides the Rumpler patent, there are others in the art

prior to Bobertz who taught the use of transparent hoods

on automobiles, such as the French publication La Locomo.

tion, issued February 11, 1911, and filed in the United

States Patent Office January 6, 1931, showing a trans-

parent glass hood on an automobile, and The Motor, a

publication of London, England, dated July 2, 1912, show-

ing a Cadillae automobile with a transparent glass hood,

Also, in the Kelsey patent, No. 1,045,152, (1912) there is

disclosure of a removable transparent dome of an air-

plane covering the hatechway, and a series of concave and

convex transparent sections conforming to the curvature of

the housing set in the bottom and sides of the housing to

permit inspection of the exterior mechanisms and surface

helow.

A transparent automobile hood was old in the art.

Whether it be made of glass, plexiglas, cel!uloid or plastie,

its function prior to the patent here was identieal with its

function in this patent. The several pieces of transparent

material constituting plaintiff’s inventive effort function

in the same manner and serve the same purpose as the

prior art patents and publications without regard as to

the type of transparent material described. The Bobertz

patent here does not come up to the high standard of

patentable invention required to sustain combination

claims such as the claims in this snit. Great Atlantic &

Pacific Tea Co, v. Supermarket Equipment Corp., 340

U.S. 147; Cuno Engineering Corp. v. Automatie Devices

Corp. 314 U.S. 84.

The claims in suit are not limited to transparent plastic

and this limitation cannot be read into the claims in

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order to save them from invalidity; Patrol Valve Co. v.

Robertshaw-Holton Controls Co., (CLA. 6), 210 F. 2d 146;

Aluminum Company of America v. Thompson Products,

Inc., (C.A. 6), 122 F. 2d 796; Parke, Davis & Co. v. Ameri-

ean Cyanamid Co, et al., supra, in which the court stated

(p. 574):

“The appellant therefore is estopped to deny the

limiting effect of the language in the claims because

these limitations are adopted to avoid the earlier

grounds of rejection and refusal and to obtain allow-

ance of the patent.’’? Citing Shepard v. Carrigan, 116

U.S. 593, 598: I. T. S. Rubber Co. v. Essex Rubber

('o., 272 US. 429. 433-434: Smith v. Magie City Kennel

(lub, Inc., 282 U.S. 784. 790, and «© * * * An applicant

cannot qualify the effect of his acquiescence in the re-

jection of a claim by stating to the Patent Office that

it is not an acquiescence and that he expects to insist

upon his right to cover the same ground which the

rejected claim covered under other and amended

claims. As declared by this court through Chief

Justice Taft, then Presiding Judge, in Thomas v.

Rocker Spring Co., 6 Cir., 77 F. 420, 431-432, an appli-

cant ‘eannot thus destroy the effect of a patent-office

ruling.’ ’’

As in the Smith v. Magic City Kennel Club, Ine. case,

supra, plaintiff here, resorts to the doctrine of equivalents,

claiming that defendant’s accused structure contains hori-

zontal and vertical members. Though this be a far fetched

argument, by comparing plaintiff’s structure with the ae-

cused hood, there is in any event an absence of ‘‘a plurality

of longitudinally extending transparent reinforcing means

connecting the adjoining edges of said members to form a

unitary structure therefrom’’. In the Smith v. Magie City

Kennel Club, Inc. ease, supra, the court further points out,

p. 790, ‘*The petitioner resorts to the doctrine of equiva-

lents, insisting that the rigid horizontal arm of the re-

spondents is to be treated as the equivalent of the arm of

the patent, and that the limiting specifications of the claims

may be ignored. What has already been said disposes of

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this contention, for where a patentee has narrowed his

claim, in order to escape rejection, he may not ‘by resort to

the doctrine of equivalents, give to the claim the larger

scope which it might have had without the amendments

which amount to disclaimer.’ Weber Electric Co. v. Free.

man Electric Co., 256 U.S. 668, 677, 678; I. T. 8. Rubber

Co. v. Essex Rubber Co., supra. It should also be ob.

served that the difference here was both in structure and

in mode of operation and result.’’

Bobertz obtained no new and unexpected results whieh

would rise to the dignity of patentable invention, since the

substitution of one material with known characteristics

for another material is not invention.

In Electro Mfg. Co. v. Yellin, the court said, 132 F. 2d

979, 981,

‘*Plastic products have been made for many years

They are lighter in weight than metal, are translucent,

and permit greater variation in color. Nemeroff did

not disclose a new material, he mer ely substituted a

plastic material for a material which was used in the

prior art, and the seep Court held that this did

not amount to invention. See Hotehkiss v. Greenwood,

11 How, 248, 52 U.S. 248; Evr-Klean Seat Pad (Co. y.

Firestone Tire & Rubber Co., 8 Cir., 118 F. 2d 600.

** * we do say that there was no patentable genius

involved in Nemeroff’s disclosures. This was the Dis-

trict Court’s conclusion, and we think it was correct.’

See also James Heddon’s ign v. American Fork & Hoe

Co., (C.A. 6), 148 F. 2d 230, 23 ; Seiberling Rubber (Co.

v. L.'T. &. Co, (0.4.6), 138 FB: Ae 71; Goodwin v. Bore-

Warner Corp., (C.A. 6), 157 F. 2d 267; Timken-Detroit

Axle Co. v. Cleveland Steel Products Corp., (C.A. 6), 148

™. 2d 267, 271.

The claims in suit are limited to reinforeine means

shown as strips 9. The mere strengthening or reinforce-

ment of Rumpler’s plastic hood would not amount to pat-

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ontable invention. Associated Plastic Companies, Ine. v.

Gits Molding Corp., (C.A. 7), 182 F. 2d 1000, 1005.

Pefendant’s accused automobile hood does not infringe

plaintiff’s patent. The patent itself is invalid for want of

patentable invention and lack of novelty. Defendant’s

motion for summary judgment is granted.

Arruur A. Kosctnski

Arthur A. Koscinski,

District Judge

Dated: August 20, 1954

U.S. District Court

Eastern District of Mich. ss

I hereby certify that the foregoing is a true copy of the

original on file in this court and cause.

Frank J. DINGELL,

Clerk

By (Sgd.) Josepnine M. Bowman

Deputy Clerk

Dated: Aug. 20, 1954

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No. 12379

UNITED STATES COURT OF APPEALS FOR THE

SIXTH CIRCUIT

Gustav H. Bopertz, Jr., )} ApreaL from the

Appellant, United States Dis-

V. - trict Court for the

General Morors Corporation, Kastern District

Appellee. of Michigan.

Decided December 14, 1955.

Before Martix, Mitter and Srewart, Cireuit Judges,

Martin, Cireuit Judge. The contest here is between

Gustav H. Bobertz, Jr., owner of United States Letters

Patent No. 1,911,600, covering a transparent automobile

hood, and the General Motors Corporation as an alleged

infringer of the patent. Plastic Unlimited, Ine., a sales

corporation and not a manufacturer, was originally a

party to the suit. The suit against that corporation was

dismissed on motion, for the reason that the instant

litigation was not begun prior to the dissolution of the

corporation under the Michigan General Corporation

Act, section 450.75. The complaint of Bobertz was served

only about two weeks before the expiration of the patent

on May 30, 1950. The patent had been issued on May 30,

19383.

Upon denial by General Motors Corporation that the

patent was either valid or infringed, issue was joined

and a pre-trial hearing had. Extensive discovery pro-

ceedings ensued. Pursuant to Civil Procedure Rule 56,

teneral Motors filed a motion for summary judgment in-

sisting that no genuine issue of material fact was pre-

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sented; that the patent claims were invalid; and, more-

over, that they were not infringed. The prior art was

cited and documents filed establishing anticipation of the

claimed invention. Several depositions and _ affidavits

were also filed, elaborate briefs were submitted to the

court, and oral arguments were presented by both sides.

After due deliberation, the district court, in an opinion-

order embracing a complete discussion of both the me-

chanieal facts and the applicable law, granted defend-

ants’ motion for summary judgment on both grounds

and dismissed the suit.

In his deposition, Bobertz asserted that the concept of

making a transparent automobile hood came to him

though observing a parked Plymouth car which at-

tracted a number of observers because of the fact that

its hood was provided with transparent windows for the

purpose of making visible the engine underneath the

hood. He noticed, however, that people who tried to see

the engine through the small openings in the hood gave

up in disgust because they could not actually see the

engine. His thought was that it would be much simpler

if the whole hood were made of transparent celluloid. His

first practical application of this thought was to make a

transparent hood for a Chevrolet automobile which dupli-

cated in celluloid the 1932 Chevrolet hood, made of sheet

steel, consisting of two substantially horizontal members

hinged together at their edges along the longitudinal

center of the hood. Two vertical side members were

hinged to the abutting edges of the horizontal members;

and the hood was secured to the chassis by conventional

hood fasteners in use by Chevrolet at that time.

The patent in suit displayed a transparent hood in

configuration substantially a duplicate of the sheet-metal

hood placed on the Chevrolet automobile manufactured

by the General Motors Corporation in 1932. Except that

the hood is transparent, the claims of the patent in suit

substantially describe a 1932 Chevrolet hood. As stated

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by the United States District Court, the five combination

claims of the patent in suit are directed to an automobile

hood made of transparent material, consisting of two

vertical members, and either one or two horizontal mem-

bers with a plurality of longitudinally extending trans.

parent reinforcing means connecting the adjoining edges

of such members to form a unitary structure therefrom,

and securing means adapted to coact with a hold-down

latch on the vehicle body to seenre removably the hood

to the body of the vehicle. The specifications state that

the object of the patent is to provide an automobile hood

of transparent material permitting at all times full visi-

bility of the engine of a motor vehicle. The specifications

declare the novelty of the invention to reside in the

transparency of the top and sides of the automobile hood,

affording full visibility of the engine. The transparent

automobile hood was not intended to be used regularly,

but only temporarily to replace the ordinary hood.

The District Court quoted Claim One of the patent as

representative. Claim Four is also typical, and reads

as follows: ‘‘An automobile hood including two trans-

parent vertical members, two substantially horizontal

transparent members, a plurality of longitudinally ex-

tending transparent reinforcing means connecting the

adjoining edges of said members to form a unitary strue-

ture therefrom, and means secured to said hood and

adapted to permit removable attachment of said hood to

a motor vehicle body.’’

The District Court asserted that it is clear from

consideration of the file-wrapper history of the prosecn-

tion of the patent in suit and from the language of the

patent claims that the claims finally granted were ex-

pressly limited to an automobile hood of several pieces

made of any transparent material and joined together

by a transparent reinforcing means to form a unitary

structure.

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All seven claims of the original application filed in

the Patent Office were rejected; and a total of nine new

claims were filed during subsequent proceedings in the

Patent Office whereof five were finally allowed. The re-

jected claims embraced such language as ‘‘transparent

means for enclosing the portion of the vehicle between

the radiator and the cowl’’; ‘‘transparent automobile

hood formed of transparent material’’: and the words

“of sheet celluloid.”’

The District Court found that the rejected claims pre-

<onted nothing patentable over Rumpler (German) Pat-

ent No. 379,379 (1923) which, in Claims One and Four,

describe a motor vehicle hood constructed from trans-

parent celluloid. The comment was made that no inven-

tion ix claimed for the latching means, and that the sub-

stitution of a temporary hood in place of the conventional

hood was taught in 1921 by Martin in Letters Patent

No. 1,383,959.

As pointed out by the Patent Office, the combination of

the cowl, radiator shell, hood and latching means there-

for is old as disclosed in Martin, no invention being in-

volved in substituting sheet celluloid for the wire-mesh

covering employed in Martin, in the light of the trans-

parent hood shown in Rumpler. The. court stated that

the moulded celluloid used in Rumpler is equivalent to

sheet celluloid and the broad use of transparent rein-

forcine means is not a patentable distinction for the

reason that an ordinarily prudent mechanie would natu-

rally locate the reinforeing means to conform to the

desien of the body of the vehicle. The reinforeing rods in

the Martin patent are adapted to conform to the design

of the vehicle body, as stated by the Patent Office, and

afford no basis for patentable invention.

The final allowance of the patent claims ensued only

when the claims were presented in specifie language

suggested by the examiner. The claims for a one-piece

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transparent hood were rejected by the Patent Office on

the prior art of Rumpler, who disclosed in his patent an

automobile hood of transparent celluloid. The claims of

the patent in suit do not disclose the nature of the ma.

terial of which the hood is to be made. The claims of the

patent seem specific and limited to a transparent hood

consisting of separate vertical and horizontal parts,

joined together by reinforcing means, in order to form

a unitary structure.

The inventors, while pursuing the application in the

Patent Office, cancelled claims sufficiently broad in scope

to cover a one-piece hood made of a single sheet of trans-

parent plastic and adopted claims specifie as to a multi-

ple-piece hood with reinforcing ribs connecting the indi-

vidual members.

In Schriber-Schroth Co. vy. Cleveland Trust Co., 311

U. S. 211, 220, 221, the Supreme Court said: ‘‘It is a

rule of patent construction consistently observed that

a claim in a patent as allowed must be read and _ inter-

preted with reference to claims that have been cancelled

or rejected, and the elaims allowed eannot by construe-

tion be read to cover what was thus eliminated from the

patent. [Citing eases.] The patentee may not, by resort

to the doctrine of equivalents, give to an allowed claim

a scope which it might have had without the amend-

ments, the cancellation of which amounts to a disclaimer.

[Citing eases.] The injurious consequences to the public

and to inventors and patent applicants if patentees were

thus permitted to revise cancelled or rejected claims and

restore them to their patents are manifest. See Leggett

v. Avery, 101 U. S. 256, 259. True, the rule is most fre-

quently invoked when the original and cancelled claim is

broader than that allowed, but the rule and the reason

for it are the same if the cancelled or rejected claim be

narrower. [Citing eases.]’’ Cf. Smith, Administratriz,

v. Magic City Kennel Club, Incorporated, 282 U. S. 784,

790.

>

The opinion of this court in A. O. Smith Corporetion

y. Lincoln Electric Co., 82 F. (2d) 226, 229, 230 (C. A. 6),

declared that the inventor had created an express limita-

tion pertaining to the inventive step, and would not be

permitted to depart from the plain meaning of the lan-

guage he adopted, or to claim for such language a broad

and general construction. It was asserted that the file

wrapper confirmed the conclusion that the inventor had

deliberately limited his claim in a specified manner and

that the claim, read in the light of the specifications,

measures the invention. See also Falkenberg v. Golding,

195 F. (2d) 482, 485 (C, A. 7); Midland Steel Products

(‘o. y. Clark Equipment Co., 174 F. (2d) 541, 545 (C. A.

6); D'Arcy Spring Co. v. Marshall Ventilated Mattress

(‘o,, 259 Fed. 236, 240, 241 (C. A. 6); R. M. Hollingshead

(‘o, v. Bassick Mfg. Co., 73 F. (2d) 5438, 548 te, . A, Os

Firestone Tire & Rubber Co, v. United States Rubber Co.,

79 F. (2d) 948, 955 (C. A. 6); Directoplate Corporation

v. Donaldson Lithographing Company, 91 F. (2d) 199

(. A. 6); BakerCammack Hosiery Mills v. Davis Co.,

181 F. (2d) 550, 563 (C. A. 4).

17a

The claims of a patert are to be interpreted, not only

in the light of the specifications, but also with reference

to file-wrapper history. Whitman v. Andrus, 194 F. (2d)

970, 275 (C. A. 6); Schriber-Schroth v. Cleveland Trust

Co,, supra.

In addition to the German patent issued to Rumpler,

No. 379.379, there is in the record documentary evidence,

which was presented to the trial judge, that the prior

art before the Bobertz patent disclosed an automobile

hood of such transparent material that the engine could

he viewed. In the issue of February 11, 1911, of a French

publication, La Locomotion, there was depicted a glass

hood for demonstrating the engine of an automobile of

that period. The fact that the hood revealed in La Loco-

motion. was made of glass and not of plastie is im-

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material, for the claims of the patent in suit are not

limited to plastic, the use of which in automobile hoods

had been revealed in Rumpler. In United States Letters

Patent No. 1,045,152, issued to Kelsey on November 26,

1912, covering a ‘‘flying machine,’’ transparent sections

of celluloid or other transparent material were directed

to be so placed that the operator could view ‘‘both the

operation and adjustment of the mechanism below the

plane.’’ A journal published in London, England, The

Motor, in its issue of July 2, 1912, showed a Cadillac

automobile with a transparent glass hood. In another

publication, The Autocar, of date September 28, 1914,

this sentence appears: ‘‘A very striking feature about

the car is a glass bonnet that Mr. Bennett has introduced

for trial and demonstration work, and one which ap-

parently attracts a great deal of interest to the ear,

[A Cadillae.]’’

The District Court logically reasoned: ‘*‘A transparent

automobile hood was old in the art. Whether it be made

of glass, plexiglas, celluloid or plastic, its funetion prior

to the patent here was identical with its funetion in this

patent. The several pieces of transparent material con-

stituting plaintiff’s inventive effort function in the same

manner and serve the same purpose as the prior art pat-

ents and publications, without regard as to the type of

transparent material described. The Bobertz patent here

does not come up to the high standard of patentable in-

vention required to sustain combination claims such as

the claims in this suit. Great Atlantic & Pacific Tea Co.

v. Supermarket Equipment Corp., 340 U. S. 147; Cuno

Engineering Corporation y. Automatic Devices Corp., 314

U.S. 84. The claims in suit are not limited to transparent

plastic and this limitation cannot be read into the claims

in order to save them from invalidity.’’ Patrol Valve

Co. y. Robertshaw-Fulton Controls Co., 210 F. (2d) 146

(C. A. 6); Aluminum Company of America v. Thompson

Products, Inc., 122 F. (2d) 796 (C. A. 6); and Parke-

4S

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19a

Davis & Co. v. American Cyanamid Co., 207 F. (2d) 571

(C, A. 6), were appropriately cited as authority.

Mere substitution of materials, when no new results

are accomplished, does not attain the dignity of invention.

Timken-Detroit Axle Co, v. Cleveland Steel Products Cor-

poration, 148 F. (2d) 267, 271 (C. A. 6); James Heddon’s

Sons v. American Fork and Hoe Co., 148 F. (2d) 230 (Cc.

A. 6); Seiberling Rubber Co, vy. I. T. 8S. Co., 134 F. (2d)

71 (C, A. 6); Goodwin v. Borg-Warner Corporation, 157

F. (2d) 267, 274 (C. A. 6); United States Appliance Cor-

poration V. Beauty Shop Supply Co., 121 F. (2d) 149,

150 (C. A. 9); Hinehman v. Jim Robbins Co., 113 F. Supp.

992, 304 (KE. D. Mich.; Levin, J.).

The Court of Appeals for the Seventh Cireuit, in Elec-

tro Mfg. Co. v. Yellin, 132 F. (2d) 979, 981 (C. A. 7), said:

“Plastie products have been made for many years. They

are lighter in weight than metal, are translucent, and per-

mit great variation in color. Nemeroff [inventor of the

patent there in suit] did not disclose a new material, he

merely substituted a plastic material for the metal which

was used in the prior art, end the District Court held

that this did not amount to invention. [Citing cases. ]

Moreover, the use of transparent and translucent ends

for lighting fixtures is old. We do not say that the design

patents referred to anticipate the patent in suit, yet we

do say that there was no patentable genius involved in

Nemeroff’s disclosures. This was the District Court’s

conclusion, and we think it was correct.’’

It seems almost idle to reiterate that quite a high

standard of invention is now exacted to sustain combina-

tion claims embracing old elements in a patent. This

was made plain fourteen years ago in the opinion of the

Supreme Court in Cuno Engineering Corp. v. Automatic

Devices Corp., 314 U. S. 84, 90-92. Any lingering doubt

as to the intention of the Supreme Court to require strict

rather than liberal construction of combination claims

was certainly dispelled by its opinion in Great Atlantic

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& Pacific Tea Company vy. Supermarket Equipment Corp,,

340 U. S. 147, 154, where the majority opinion concluded

that the standard of invention used in the lower courts

was less exacting than that required where a combina. |

tion was made up entirely of old components. ;

In General Motors Corp. v. Estate Stove Co., 203 F.

(2d) 912, 917, 918 (C. A. 6), Judge MeAllister thus ex.

pressed the view of this court: ‘In an able and ingenious

argument, appellee submits that, in specifying anew

statutory standard of invention, the Act does not treat

combination patents on a different basis from other pat-

ents. as it is claimed the Supreme Court did treat them

in Great Atlantic & Pacific Tea Co. v. Supermarket

Equipment Corp., 340 U. S. 147, 71. S. Ct. 127, 95 L. Ed.

162; that the new Section 103 defines a single standard of

invention for all patents; that the subject matter as a

whole would not have been obvious at the time the inven-

tion was made; and that the extent to which the Great

Atlantic & Pacific Tea Co. ease required a different, or

more exacting standard, or a more severe test for combi-

nation claims than the single standard of invention for

all patents, was rejected by Congress in the new <Aet.

We are, however of the view that the priniciple stated in

the Great Atlantic & Pacific Tea Co. ease is not modified

by the new Act, but continues to be the law, and is here

controlling.’’

The Court of Appeals for the Seventh Circuit, in

Associated Plastics Companies vy. Gits Molding Corpora-

tion, 182 F. (2d) 1000, 1005 (C. A. 7), has well said: “A

long line of cases has held it to be an essential require-

ment for the validity of a patent that the subject-matter

display invention, more ingenuity than the work of a

mechanic skilled in the art. Under this test, some su-

stantial innovation is necessary, an innovation for which

society is truly indebted to the efforts of the patentee.

The primary purpose of our patent system is not reward

of the individual but the advancement of the arts and

2la

sciences. Its inducement is directed to disclosure of ad-

vances in knowledge which will be beneficial to society;

it is not a certificate of merit, but an incentive to dis-

closure.’’

The claimed invention of Bobertz merely duplicated

in transparent plastie the conventional Chevrolet hood

which was in use in 1932. Bobertz’s idea stemmed from

his observation of a Plymouth hood having transparent

windows for the observation of the engine underneath

the hood. The transparent hood designed by Bobertz

emanated from an obvious step which might reasonably

have occurred to a mechanic skilled in the art.

The appellant patent owner insists that the District

Court erred in sustaining the motion of appellee for sum-

mary judgment on the eround that the patent is invalid

for lack of invention in view of the prior art. The insist-

ence is that there were material issues of fact to be

tried, that the court disregarded the presumption of

validity from the issuance of the patent by the United

States Patent Office and upon subsidiary grounds: all

challenging the right of a United States District Court

by summary judgment to hold the claims of the patent

invalid for want of patentable invention and lack of

novelty. The District Judge thus met this argument:

“Defendant filed motion for summary judgment under

Rule 56, claiming absence of any genuine issue of material

fact. Oral argument was had and all exhibits were

made available to the court, ineluding defendant’s ac-

eused device. Briefs were filed fully covering the issues

involved. Ordinarily courts are reluctant to decide im-

portant issues by summary judgment because of the lack

of a record adequate to explain the issues of fact and

law. [Citing eases.] . . . Both parties in this case re-

sorted to extensive discovery proceedings, filing of affi-

davits and exhibits, and making admissions. The court

also had the benefit of the Patent Office file wrapper

showing the history of the prosecution of this patent.

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The thoroughness of the pre-trial activities of both par.

ties resulted in the elimination of any genuine issue of

material fact in dispute. Under such circumstances jt

has been held that where no factual issues are present

and where the patents and products involved are suff.

ciently simple to make expert testimony unnecessary,

disposition under Rule 56 is proper.’’ The court cited

authorities, including a patent case, Steigleder v. Eber.

hard Faber Pencil Co., 176 F. (2d) 604 (C. A. 1), certio-

rari denied, 338 U. S. 893. The opinion in the Steigleder

ease emphasized the advantage of granting summary

judgment instead of subjecting the parties to the expense

of a trial, where there was no need of expert witnesses to

furnish technical explanations bearing on the structure

and mode of operation of fountain pens.

In Vulcan Corporation vy. International Shoe Machinery

Corporation, 68 F. Supp. 990 (D. C. Mass.), affirmed on

opinion of the District Court in 158 F. (2d) 520 (C. A. 1),

certiorari denied, 330 U. S. 825, and in Alex Lee Wallan,

Inc. v. J. W. Landenburger & Co., Tne., 121 F. Supp. 55%,

556 (S. D. N. Y.), summary judgments dismissing com-

plaints in patent cases were granted. In the last cited

case, the District Judge said: ‘‘The Court of Appeals of

this Cireuit has indicated that the remedy of summary

judgment is available in patent suits where no factual

issues are raised and where the patents and produets in-

volved are sufficiently simple to make expert testimony

unnecessary. Bridgeport Brass Co. vy. Bostwick Labora-

tories, 2 Cir., 181 F. (2d) 315, 316, 319.”’

United States Cireuit Judge Soper said: ‘*The plain-

tiff makes the additional point that there is no precedent

in this court for disposing of a question of patent in-

fringement by summary judgment. The practice, how-

ever, is not unknown and is properly adopted where as

provided in Federal Rules of Civil Procedure, Rule 56(c).

28 U.S. C. A., there is no genuine issue as to any material

fact and the moving party is entitled to a judgment as a

23a

matter of law. [Citing cases.] We find that situation

to prevail in the pending case.’’ Smith v. General

Foundry Mach. Co., 174 F. (2d) 147, 151 (C. A. 4).

Where there was no genuine issue of material fact pre-

sented, this court has affirmed a summary judgment for

the defendant in a patent case. Lincoln Electric Co. v.

Linde Air Products Co., 171 F. (2d) 223 (C. A. 6). So,

likewise, has the Court of Appeals for the Seventh Cir-

enit. Davison Chemical Corp. v. Joliet Chemical, Inc.,

179 F. (2d) 793, 795 (C. A. 7). Cf. Leishman vy. Radio

Condenser Co., 167 F. (2d) 890 (C. A. 9).

Long before the adoption of the Civil Procedure Rules,

including Rule 56, this court, in an opinion by Judge

Mack (a model of brevity in a patent case) held that

where the only difference between expert witnesses was

not as to any technica] meaning or circumstance, but as

to the proper interpretation of the patent in the light

of the undisputed prior art, the question was for the

court and not for the jury. Hurin v. Electric Vacuum

Cleaner Co., 298 F. 76, 79 (C. A. 6), decided in 1924.

The attorney for appellant is altogether too strong in

his criticism of the trial judge. There is no justification

in the eontext for his statement that ‘‘our courts are

established to do justice and not merely dispose of cases

in a hurried manner.’’ Nor is there justification for his

complaint that the court should not have sustained

defendant’s motion for summary judgment after the case

had been set for trial. At the conclusion of the last hear-

ing, the judge had stated that he wanted everything

made available for his inspection and persual, so that

he would not have to call up the attorneys from time to

time; and that, after going through all the material be-

fore him, he would feel free to advise the attorneys of

his decision, if he became satisfied as to appropriate

action on all the questions raised by the motions. The

judge did not bind himself to afford the parties a further

hearing. He left the matter optional in his own discretion.

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In addition to the prior art citations, the District Tudge

had before him the deposition of the plaintiff-patentee,

Bobertz, and his admissions on file made under Rule 56;

the depositions of Shurly, sales manager of Plasties Un.

limited, and of Wood, its secretary; deposition of Skinner,

vice-president of General Motors and general manager

of its Oldsmobile Division, and of Chayne, vice-president

of General Motors in charge of engineering; affidavits

of Barton (identifying a photograph of the 1932

Chevrolet hood), and of Hirshman (identifying photo.

graphs of the 1949 Oldsmobile steel hood and the ae.

cused plastic hood); and the affidavit of Thorpe iden.

tifving the 1949 Oldsmobile steel hood. Moreover, the

judge had the benefit of extensive briefs filed by attor-

neys for the parties. He was in full possession of all

essential facts necessary for correct decision of the ease,

Judge, Koscinski’s logically reasoned and authorata-

tively supported opinion evinces no haste; but, to the

contrary, manifests careful study and calm deliberation.

This just jurist, working gamely as he did under the

handicap of painful ill heaith, deserves commendation

of the excellent performance of his juristie duty. We

coneur in the conelusion which he reached concerning the

invalidity of the claims of the patent in suit. This being

true, it is unnecessary for us to decide or even to discuss

the question of infringement. That issue is moot. In

James Heddon’s Sons v. American Fork & Hoe Co., 148

F. (2d) 230, 234 (C. A. 6), Judge Simons thus spoke for

this court: ‘‘In view of our conclusion that Barnhart’s

claims are invalid for lack of invention, it becomes un-

necessary to consider questions of priority or infringe-

ment and the judgment below is affirmed.’’

In the instant case, the judgment of the United States

District Court is likewise affirmed, for the reason that

United States Patent No. 1, 911,600, issued May 20, 1938,

to Bobertz, et. al., covering a transparent hood for an

automobile, is held invalid for lack of invention.

i a5,

“"T JUL 10 lose I

JOHN T. FEY, Clerk

Supreme Court of the United States

OCTOBER TERM, 1956

—_—_+——

No. BS 5

——

GUSTAV H. BOBERTZ, JR.,

Petitioner,

vs.

GENERAL MOTORS CORPORATION,

Respondent

since peinicrantie

BRIEF FOR RESPONDENT IN OPPOSI-

TION TO THE PETITION FOR

WRIT OF CERTIORARI

a hemnd Go. Gt2 Beanbica St, Detroit 26, Michigan

INDEX

Page

Character of Case and Opinions of Courts Below... ]

Statement of Material Facts. ......-.-++--e ee eee 3

Complaint Properly Dismissed Under Rule 56 F. R.

PR ee ence an eae ee keen eas De haa dD

Petitioner Had Ampie Time, and in Fact Fully Pre-

sented his Case Against Respondent’s Motion

for Summary Judginent..........+++eeeee eens 8

MAIO. ps cv encase sss nr bdeeee ne ren screws bases 10

Appendix :

Photostat of drawings of Bobertz patent....... 1b

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SeLOOMOUON occas cv bess sacdenevecrersvene? 3b

TABLE OF CASES

Automatic Radio Mfg. Co. v. Hazeltine Research,

Inc., 339 U. S. 827, 70'S. Ct. 894, 94 Law Ed. 1312 5)

Bobertz v. General Motors Corporation, 126 Fed.

Supp. 780 (D. C., Ih. D. SS De eer ere 2, 3, 7

Bobertz v. General Motors Corporation, 228 Fed.

(Qd) 94 (C. A. BG)... en necnennccncccrececccees a Oy 8

Bridgeport Brass Co. v. Bostwick Laboratories, Inc.,

181 Fed. (2d) 315 (C. A. 2)... cece ee erences 5

Davison Chemical Corp. v. Joliet Chemicals, Inc.,

179 Fed. (2d) 793 (C. A. 7). cece eee eee eens 6

Great Atlantic & Pacific Sea Co. v. Supermarket

Equipment Corp., 340 U.S. 147, 95 Law Ed. 162 8

Lincoln Electric Co. v. Linde Air Products Co., 171

Fed. (2d) 223 (C. A. 6)... eee e cree cece eens 6

PLR IDES OP PLO EM ALLL ACL LIE acl BARONS OLD sal ate P eae e-5 3 2,

' “ : te

il

Mas v. Owens-Illinois Glass Co., 222 Fed. (2d) 889

C. A. 3), certiorari denied 350 U.S. 1016....... 5-6

Mileor Steel Co. v. George A. Fuller Co., 122 Fed.

(2s) Soe tC, Be Bh ivs cs ccdveacsesossdeeetreas BY

2 Morton Salt Co. v. G. S. Suppiger Co., 314 U.S. 488,

7 62 S. Ct. 402, 86 Law Ed. 363................- 5,8

Park-in-Theatres, Inc. v. Perkins, 190 Fed. (2d) 137

i “Pr ere PTT PET re rieT ye 6

; Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.

S. 211, 61 S. Ct. 235, 85 Law Ed. 132........... 7

Smith v. General Foundry Machine Co., Inc., 174

PO Pet Bee Pye Re ek cew eet heeerakianne 6

Steigleder v. Eberhard Faber Pencil Co., 176 Fed.

SOD PR Ae ae Boeke ennikbissp es eenvries sce 5

United States v. Esnault-Pelterie, 303 U. S. 26, 58

Me. C4 ad, OE Ew Wb, Bs iis vse cies tac snes 8

Young v. Ralston-Purina Co., 88 Fed. (2d) 97 (C. A.

BP secs b niin Ob 20s ease es bce ce REA Se Rane eau es 6

:

3

5

IN THE

Supreme Court of the United States

OCTOBER TERM, 1956

a el

No. 938

a

GUSTAV H. BOBERTZ, JR.,

Petitioner,

vs.

GENERAL MOTORS CORPORATION,

Respondent

BRIEF FOR RESPONDENT IN OPPOSI-

TION TO THE PETITION FOR

WRIT OF CERTIORARI

a

CHARACTER OF CASE AND OPINIONS OF

COURTS BELOW

This is an ordinary patent suit brought by Gustav H.

Bobertz, Jr. against General Motors Corporation for in-

fringement of United States Letters Patent No. 1,911,600,

issued May 30, 1933, upon application filed November 22,

1932, covering a transparent hood consisting of separate

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vertical and horizontal members joined together at their

adjoining edges by reinforcing means to form a unitary

structure.

The patent expired May 30, 1950, about two weeks after

the complaint was served on defendant (May 15, 1950).

Since no other suit has been brought for infringement of

this patent, this case presents Tio conflict of decisions be-

tween Courts of Appeals. The decision below is based on

its own facts and affects no one but the litigants.

Respondent, acting under the provisions of Rule 56 of

the Federal Rules of Civil Procedure, moved the District

Court for Summary Judgment on the grounds of non-in-

fringement and invalidity of the patent in suit (D. App.

21b).*

The District Court granted respondent’s motion on both

grounds and dismissed the complaint. The District Court’s

opinion is reported in 126 ed. Supp. 780 and is printed in

the appendix to the Petition herein beginning at page la.

The Court of Appeals, Sixth Circuit, affirmed the District

Court on the ground that the patent in suit is invalid for

lack of invention and did not rule on the issue of infringe-

ment. The opinion of the Court of Appeals affirming the

District Court is reported at 228 Fed. (2d) 94 and is

printed in the appendix to the Petition herein beginning at

page 12a,

*The abbreviation “ID. App.” is used herein to designate defendant’s

(respondent herein) appendix.

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STATEMENT OF MATERIAL FACTS

The Bobertz patent in suit (D. App. 6b) shows a trans-

parent hood which in form or configuration is substa: ‘ally

a duplicate of the sheet metal hood used on the Chev: >!

automobile manufactured and sold by General Motors Cor-

poration in 1932. This was admitted by the patentee Bo-

bertz (D. App. 70b, 75b) and the Court of Appeals so found

(228 Fed. (2d) 94 at 99). This is also evident from a com-

parison of the drawings of the Bobertz patent in suit (copy

appended at page Ib) with the 1932 Chevrolet hood (photo-

graph appended at page 2b; also D. App. 52b, 53b). The

claims of the patent in suit are limited to a hood made from

a plurality of transparent pieces or members connected at

their adjoining edges by reinforcing strips in order to form

a unitary structure. Both the District Court and the Court

of Appeals so found (126 Fed. Supp. 780, 782; 228 Fed.

(2d) 94, 97).

In 1949 respondent introduced to the public the Oldsmo-

bile ** Rocket” V-8 engine and displayed the ‘* Rocket’’ en-

gine by means of a plastic hood (photographs of respond-

ent’s accused plastic hood appear in defendant’s appendix

pages 63b-66b and also plaintiff’s appendix page 63a). Re-

spondent’s hood in form or shape was a duplicate of the

metal production hood used on the 1949 Oldsmobiles but

was made from a single sheet of transparent plastic mate-

rial the border areas of which were blocked out by opaque

paint to provide a central window through which the

**Rocket’’ engine could be observed (D. App. 20b). Photo-

graphs of the 1949 Olds steel production hood appear in

Defendant’s Appendix 56b-62b.

Respondent based its motion for summary judgment on

the following incontrovertible, self-proving documents;

namely,

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(1) <A copy of the file wrapper of the patent in suit

1,911,600, authenticated under the seal of the Patent

Office and certified by the Commissioner of Patents (1D.

Kx. 3; D. App. 10b-19b; P. App. 114a-124a).

(2) German patent to Rumpler 379,379, issued

August 20, 1923 (D. Ex. 4; D. App. 25b) and a transla-

tion of the German patent to Rumpler 379,379, August

20, 1923, authenticated under the seal of the Patent

Office and certified by the Commissioner of Patents (D.

Kix. 4-A; D. App. 28b). Rumpler describes and claims

an automobile having a hood of transparent celluloid.

(3) LaLocomotion—lebruary 11, 1911, No. 23,

page 65 (D. Ex. 5; D. App. 33b, 34b) and a translation

of the captions under the photographs in LalLocomo-

tion, February 11, 1911, No. 23, page 65, authenticated

under the seal of the Patent Office and certified by the

Commissioner of Patents (D. lex. 5-A; D. App. 35b).

This publication shows and describes an automobile

chassis in which the engine is covered by a glass hood.

(4) The Autocar—September 28, 1912, pages 570

and 571, photostatic copy authenticated under the seal

of the Patent Office and certified by the Commissioner

of Patents (D. Ex. 6; D. App. 39b). This publication

shows and describes a Cadillac car with a transparent

glass hood.

(5) The Motor—July 2, 1912, pages 965, 966 and

967 (D. Ex. 7; D. App. 42b). This publication shows a

Cadillac car with a transparent glass hood.

(6) United States Patent No. 1,045,152, November

26, 1912, ** Flying Machine,’’ Marl H. Kelsey (D, Ex. 8;

D. App. 46b). This patent shows plastic window for

viewing an airplane engine.

enon

”

(7) The Autocar—May 3, 1913, pages 804 and 805,

photostatic copy authenticated under the seal of the

Patent Office and certified by the Commissioner of

Patents (D. lox. 5-B; D. App. 36b).

The other proofs consisted of the deposition of petitioner-

patentee, Bobertz; admissions on file made by petitioner

Bobertz under Rule 36, F. R. C. P.; the uncontroverted

affidavit of Barton identifying a photograph of the 1932

Chevrolet hood (D, App. 52b); the uncontroverted affidavit

of Hirshman identifying photographs of the 1949 Oldsmo-

bile production steel hood (D. Ky. 2-A) and of the accused

plastic hood (D. lx. 2; D. App. 54b); and the uncontro-

verted affidavit of Thorpe identifying the 1949 Oldsmobile

production steel hood (D. Ex. 2-A; D. App. 67b).

COMPLAINT PROPERLY DISMISSED UNDER

RULE 56 F. R. C. P.

Rule 56 of the Federal Rules of Civil Procedure provides

that as to any asserted claim summary judgment shall be

rendered for the moving party if the pleadings, depositions,

and admissions on file show that there is no genuine issue

as to any material fact and that the moving party is en-

titled to a judgment as a matter of law. The procedure

outlined in Rule 56 for terminating groundless litigation

has been found particularly appropriate in many patent

cases: Morton Salt Company v. G. 8S, Suppiger Company,

314 U.S. 488, 62S. Ct. 402, 86 Law Ed. 363; Automatic

Radio Manufacturing Company v. Hazeltine Research, Inc.,

339 U.S. 827, 70 S. Ct. 894, 94 Law Ed. 1312; Steigleder v.

Eberhard Faber Pencil Co., 176 Fed, (2d) 604 (C. A. 1);

Milcor Steel Co. v. George A. Fuller Co., 122 Fed. (2d) 292

(C, A. 2); Bridgeport Brass Co. v. Bostwick Laboratories,

Inc., 181 Fed. (2d) 315 (C. A. 2); Mas v. Owens-Illinois

Glass Company, 222 Fed. (2d) 889 (C. A. 3), certiorari

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6

denied 350 U. S. 1016; Smith v. General Foundry Machine

Company, Inc., 174 Fed. (2d) 147 (C. A. 4); Lincoln Elec-

tric Co. v. Linde Air Products Co., 171 Fed. (2d) 223 (C. A.

6); Davison Chemical Corp. v. Joliet Chemicals, Inc., 179

Fed. (2d) 793 (C. A. 7); Young v. Ralston-Purina Co., 88

Fed. (2d) 97 (C. A. 8); Park-in-Theatres, Inc. v. Perkins,

19) Fed. (2d) 187 (C. A. 9).

All of the evidence relied upon by the respondent in sup-

port of its motion is in the form of self-proving documents

which have not been, and could not be, contradicted in any

manner by the petitioner. The structures of the plural

piece transparent hood claimed in the patent in suit, of re-

spondent’s single piece plastic transparent hood, and of the

transparent hoods shown and described in the prior art are

simple and such that they may be readily comprehended by

the Court and without the need of any technical explana-

tion by an expert witness, and both the Distriet Court and

the Court of Appeals so held (126 Fed. Supp. 780, 781; 228

Fed. (2d) 94, 100).

The prior art German patent to Rumpler 379,379 (D.

App. 20b-27b) and an English translation thereof (D. App.

28b-32b) describes an automobile hood of transparent ma-

terial so that the engine can be viewed. Rumpier’s claim

4 is directed to an

‘*Automobile * * * characterized by a motor

hood of transparent celluloid” (D. App. 32b).

The French publication ‘* LaLocomotion’’ (D. App. 33b-

39b) shows a glass hood for demonstrating the engine of a

Bayard-Clement automobile. A photograph of ** LaLoco-

motion’’ is appended at page 5b. The fact that ** LaLoco-

motion’’ hood is of glass is of no materiality because the

claims in suit are not limited to a plastic hood. Further,

Rumpler taught the use of a plastic hood. There is addi-

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7

tional prior art of record cited by the District Court and

the Court of Appeals showing that long before the Bobertz

patent in suit it was commonplace to make an automobile

hood of transparent material so that the engine could be

viewed, 228 Fed. (2d) 94, 97; 126 Fed. Supp. 780, 784.

The claims of a patent should be interpreted not only in

the light of the specification but also in the light of its file

history, Schriber-Schroth Company v. Cleveland Trust

Company, 311 U.S. 211, 217-218, 61'S. Ct. 235, 85 Law Ed.

132, 135-136. The file history clearly shows that the patent

in suit is limited to a multiple piece transparent hood and

does not cover respondent’s one piece hood. Referring to

the file history, the Court of Appeals stated, 228 Fed. (2d)

94 at 97:

‘*The inventors, while pursuing the application in

the Patent Office, cancelled claims sufficiently broad

in scope to cover a one-piece hood made of a single

sheet of transparent plastic and adopted claims spe-

cific as to a multiple-piece hood with reinforcing ribs

connecting the individual members.’’ (Italics ours.)

The District Court likewise so found, 126 Fed. Supp. 780 at

783.

The principal issue in this law suit is indeed simple;

namely, did it amount to patentable invention in 1932 to

duplicate in transparent material the then current Chevro-

let production automobile hood? Both Courts below an-

swered this question in the negative.

Although respondent’s accused hood (D. Ex. 2) was

placed in evidence, this hood was not at all necessary to

the decision of the Court of Appeals affirming the District

Court on the ground that the Bobertz patent in suit was

invalid. This only required an understanding of the hood

shown in the patent in suit (admittedly a reproduction of

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8

the 1932 Chevrolet hood in plastic instead of steel D. App.

70b, 75b) and of the transparent hoods shown in the prior

art, such as the German patent to Rumpler 379,579 and the

French publication ‘‘LalLocomotion’’ February 11, 1911 in

the light of the high standard of invention set by this Court

in Great Atlantic & Pacific Tea Co. v. Supermarket Equip-

ment Corp., 340 U.S. 147, 95 Law Kd, 162. A comparison

of the patent in suit with the prior art on the issue of

validity will demonstrate the simplicity of the hood strue-

ture in issue and that this Court can understand this struc-

ture without the need for any technical explanation by an

expert witness.

It is clear that there is no genuine issue as to any mate-

rial fact bearing on the question of validity; that the ques-

tion of validity was properly determined as a matter of law,

United States v. Esnault-Peltcrie, 303 U.S. 26, 30, 58 8.

Ct. 412, 414, 82 Law Ed. 625; and that the case was properly

disposed of by way of summary judgment of dismissal,

Morton Salt Company v. G. S. Suppiger Company, and

other cases cited, supra, pages 5-6.

PETITIONER HAD AMPLE TIME, AND IN FACT FULLY

PRESENTED HIS CASE AGAINST RESPONDENT'S

MOTION FOR SUMMARY JUDGMENT

Respondent’s motion for summary judgment was served

on petitioner April 1, 1954 and the hearing on this motion

before the District Court was had on May 24, 1954. Peti- ff

tioner had ample time to prepare his opposition to this Ff

motion. On April 10, 1954 petitioner filed an eighteen (18) |

page brief opposing respondent’s motion, on May 5, 1994

petitioner filed a fourteen (14) page brief analyzing the

prior art, and on May 6, 1954 presented Exhibits D, KE, F

and G which are present in plaintiff’s appendix (P. App.

Gla, 62a, 65a, 64a).

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9

Petitioner also argued in opposition to respondent’s mo-

tion before the District Court on May 24, 1954 (D. App.

88b). At this hearing petitioner’s counsel again referred

to his detailed briefs filed in opposition to the motion (D,

App. 88b). Petitioner’s brief included the subject of file

wrapper estoppel (D. App. 88b). At the close of the argu-

ment the District Court set a date of July 12, 1954 for

resuming the hearing if necessary but very clearly pointed

out that a further hearing might not be necessary and that

he might decide respondent’s motion in the interim. The

District Court said:

‘se 6* * T probably will want to ask counsel some

questions and perhaps ask for some discussion. But

if I feel, after going through all of the material that

is before me that I can satisfy all of the questions

raised here today on all three motions, why, I will

feel free to let you know what my decision is’’ (D.

App. 89b). (Italics ours.)

Later on in the proceedings the District Court again said:

‘The Court: Well, I’ll say this: I hope to be able

to resume the hearing, if a hearing will be necessary,

or decide the motions by that time; * * *’’ (D.

App. 89b). (Italics ours.)

In the light of this record and the admonition of the Dis-

trict Court, it is clear that petitioner had ample time to,

and in fact did, fully present his case in opposition to re-

spondent’s motion for summary judgment.

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CONCLUSION

Since this case has no importance beyond the immediate

facts and parties involved therein and was decided by the

proper application of well established principles of law to

a specific set of facts, the petition presents no reason what-

soever for review on writ of certiorari and should be denied.

Respectfully submitted,

GEORGE L. DeMOTT,

ARTHUR RAISCH,

Counsel for Respondent.

col

Drawings of Bobertz Patent lb

May 30, 1933. G H BOBERTZ, JR., ET AL 1,911,600

AUTOMOBILE HOOD

Filed Nov. 22, 1932

INVENTORS

Timothy J lafontatne,

20 Guetary 1 Bober £z,Sr

ATTORNEY

1932 Chevrolet

La Locomotion 3b