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November 13, 1934

WRIGHT METAL, Inc., et al.

The opinion of the court was delivered by: KNIGHT

KNIGHT, District Judge.

On Motion to Reopen the Case and for a Reargument as to Certain Claims.

The defendants move to reopen the case as to certain claims in several patents and also for a reargument on certain claims. As to patent No. 1,842,094, claims 1 and 9; patent No. 1,681,805, claims 7, 8, and 9; patent No. 1,725,350, claim 4; and Patent No. 1,681,340, claim 1; the defendants move both for a reargument and reopening of the case. After a careful study of the affidavits submitted in support of the motion to reopen, I am of the opinion that the motion should be granted as to each of the aforesaid claims. Considering the difficulties which necessarily must arise in the investigation of the rights of the parties in a suit of this character involving many claims, it seems to the court that it is reasonable to believe that certain of the alleged prior art uses might not have been discovered by fair diligence at the time of the trial. The court is concerned only in making the right determination between the parties, and it seems to it that in justice to the defendants the opportunity to present this alleged newly discovered evidence should be afforded them.

 Since, as stated, all these claims in these several patents are those upon which a rehearing has been asked, it follows, in view of the opinion just expressed, that a rehearing must be granted in so far as it applies to the effect of the newly discovered evidence. Upon the hearing on the reopening of the case, the court will determine what further examination, if any, should be permitted.

 In view of the decision of the court upon the several claims upon which a reargument is asked, it is deemed advisable to go somewhat into detail in giving the reasons for the action thereon taken by the court.

 Reissue Patent No. 17,547, Claim 3.

 Defendants contend that claim 3 of reissue patent No. 17,547 is an attempt unlawfully to extend the running of a patent monopoly already claimed in an earlier patent, No. 1,681,805. It does seem to the court that patent No. 1,681,805 discloses claims not directed to the idea of a symmetrical post nor a resilient coupling. It is true a symmetrical post is disclosed. Claim 3 clearly claimed the shoulders on all faces of the post to make a symmetrical post, and the idea of a resilient coupling between the cover and the post channel. It seems to the court that claim 3 could not have been made in the earlier patent, No. 1,681,805, because the earlier patent did not disclose the resilient coupling. Claim 3 seems to be for a different species than that which is already claimed in claim 12 of patent No. 1,681,805, and there seems to be a proper line of division between them, and therefore no double patenting. It is not the similarity of disclosures of two patents to the same patentees which determines their validity, but rather it is the sameness of the inventions which are claimed.

 If this view is correct, the validity of claim 3 must then stand or fall on its validity over the prior art. The patentee's own prior patent is not generally prior art to his later patent, unless there is double patenting on account of the claims, or the difference between the two are too trivial to require invention to produce. There are advantages in the symmetrical post, and the resiliently attached cover, and such changes are not trivial.

 The question as to validity of claim 3 is whether or not the inventor was required to modify the symmetrical post of the prior art by making one face removable and attaching it by resilient means to the post channel. While prior art undoubtedly shows the removable cover attached to a post channel by resiliency, there was not also the symmetrical post used with such removable panel. The burden of proof that there was no invention was, of course, upon the defendants. Presumption of validity arises from the grant of the patent itself.

 While I have not yet been shown reasons why my former decision should be changed, I realize that the question is close and not free from some doubt. The defendants have presented an extended memoranda on the question of this claim. The plaintiffs seem to have relied mainly upon the opinions of the court stating the circumstances under which motion for reargument should be denied. I realize the force of these opinions. Where the question, as here, seems a close one, the court feels it should have all the light that can be given, and it, therefore, grants the motion for a reargument as to this claim.

 Patent No. 1,856,995, Claim 1.

 The plurality of panel units in removable assembly between the uprights recited in claim 1 of patent No. 1,856,995 does not seem to me to add any patentability over the prior art, since the use of removable panels between the uprights is old in the art, and there is no new coaction between the panels and the posts. The claims of a later patent must distinguish patentability from an earlier patent even if division of that patent. Claim 1 of patent No. 1,856,995 differs from claims 2, 3, and 17 of the earlier patent mainly by including the ties connecting opposite flanges of the channel-shaped post. Claims 2, 3, and 17 do not recite these ties, but claim 11 of the earlier or parent patent, No. 1,681,805, does. The latter, however, recites the connecting means between the face member and the ties and thus definitely claims specific structures shown in figures 3 and 4 of the earlier patent, No. 1,681,805. The courts have said that while an applicant may elect to place his generic claims in either the parent or division applications, the generic claims must all be in one application, and the claims in the other application must be then read upon or be capable of being read upon a different embodiment of the patent. It seems to me that there is a question as to whether there is a proper line of division between the parent patent, No. 1,681,805, and the divisional patent No. 1,856,995, and whether claim 1 of divisional patent is an attempt to claim the same subject-matter already claimed in the parent patent and should have and could have been made in the parent patent. For these reasons, it seems to me that rehearing on claim 1 of the divisional patent, No. 1,856,995, should be granted.

 Patent No. 1,856,995, Claim 12.

 This claim relates to a different combination of elements than is recited in claims 1, 2, and 3 of patent No. 1,842,094, hence there appears to be no double patenting. The specifications of the two patents might be identical and not be double patenting if the claims of one patent are not directed to the same combinations as in the other patent. I see no reason to change the ...

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