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BULLDOG ELEC. PRODS. CO. v. COLE ELEC. PRODS. CO.

December 20, 1944

BULLDOG ELECTRIC PRODUCTS CO.
v.
COLE ELECTRIC PRODUCTS CO., Inc., et al.



The opinion of the court was delivered by: MOSCOWITZ

The defendant Westinghouse Electric and Manufacturing Company, hereinafter referred to as Westinghouse, has made a motion herein for summary judgment on its counterclaim adjudicating letters patent of the United States Patent Office, No. 2,285,770, to William H. Frank and Joseph A. Messing, owned by the plaintiff, Bulldog Electric Products Company, hereinafter referred to as Bulldog, as invalid and void.

The grounds of Westinghouse motion are:

'A. That in the proceedings in the United States Patent Office in connection with said patent, an election was made and plaintiff is estopped to assert or maintain that William H. Frank and Joseph A. Messing are the inventors of the subject matter set forth in the claims of said patent; and plaintiff is also estopped because said Frank and Messing disclaimed therein that they are the inventors of said subject matter.

 'B. That there was laches in presenting claims including the vitalizing element which resulted in the allowance of the claims, for more than two years after the publication and grant of plaintiff's patent No. 2,102,295 disclosing the same structure as said patent No. 2,285,770.

 'C. That the invention of said patent is not the same as that disclosed in the original application for said patent, but includes new matter not originally shown or described.

 'D. That no supplemental oath was filed in the application which matured into said patent, after the embodiment in the claims thereof of the element which resulted in their allowance and which had not been embraced within the statement of invention or claims originally presented.

 'E. That if (contrary to fact) it were contended or determined that the purported invention of said patent is the same as was originally disclosed or that there was no laches in presenting claims to the vitalizing element or that there was no change in the purported invention claimed as not to require a supplemental oath (contrary to grounds B, C, and D above) said patent No. 2,285,770 is directed to the same invention as plaintiff's patent No. 2,102,295 and is invalid and void for double patenting therewith.'

 While applications for summary judgment are unusual in patent cases, nevertheless they are justified under Rule 56 of the Federal Rules of Civil Procedure, 28 U.S.C.A.following section 723c. Milcor Steel Co. v. George A. Fuller Co., 2 Cir., 1941, 122 F.2d 292. The purpose of the Rules is to secure the just, speedy and inexpensive determination of every action. Rule 1. While the task of the judge is perhaps made more difficult in determining a motion for summary judgment than it would be in a disposition of the patent after trial, nevertheless in a case such as this a motion for summary judgment is the correct remedy. Both plaintiff and defendant agree that an actual controversy exists between the parties and that this is a proper case for summary judgment.

 A motion was heretofore made by the plaintiff for leave to take depositions to establish that the doctrine of 'unclean hands' applied to the defendant Westinghouse, which is here endeavoring to have the patent adjudicated invalid. However, this Court, in an opinion which will be filed simultaneously herewith, decided that the 'unclean hands' doctrine does not apply. 59 F.Supp. 587.

 The present motion was argued and is submitted solely on the records of the Patent Office. The patent herein, No. 2,285,770, evidently had a difficult time in the Patent Office. It was rejected and thereafter an appeal was taken to the Court of Customs and Patent Appeals (In re Frank et al., 29 C.C.P.A., Patents, 713, 123 F.2d 820, dated December 1, 1941), and that court in an opinion reversed the determination made by the Board of Appeals of the Patent Office and decided that the patent involved invention. Both the Board of Appeals and the Primary Examiner had decided that it did not involve invention. In his statement filed in the Patent Office on May 31, 1940, the Examiner aptly states the purposes of the invention: 'The invention relates to a thermostatically controlled circuit breaker having a manually operated means by which the circuit breaker is moved to open or closed position as in an ordinary switch or circuit breaker. In addition there is provided a current traversed bi-metallic latch which in the normal manual operation, holds a releasable part but which on overload warps to free the releasable part. The breaker then moves to open position automatically.'

 Generally stated, the grounds of the defendant's motion for summary judgment are estoppel, disclaimer, laches, departure, two-year bar, no supplemental oath and double patenting. All of these grounds have been considered either by Examiners of the Patent Office, Solicitors of Patents, or by the Court of Customs and Patent Appeals. While it has up to the present time been decided that the determination of Examiners, Solicitors of Patents, and the Court of Customs and Patent Appeals is not binding upon the district court, which is called upon to adjudge the validity of the patent) nevertheless it is persuasive and where, as here, the patent had no easy course and was carefully considered by all of these, the determination made by each is entitled to respectful consideration.

 The history of this case in the Patent Office is of some interest. The Patent Office and the Court of Customs and Patent Appeals did not find any evidence of estoppel. The Examiner advised rejection of the patent upon the ground of double patenting, estoppel and also for want of invention. The Solicitor of the United States Patent Office conceded before the Court of Customs and Patent Appeals that there was no estoppel or double patenting and, in fact, confessed error in that respect in the rejection by the Board of Appeals of the Patent Office. The Solicitor of the Patent Office stated before the Court of Customs and Patent Appeals that the only issue was the Board's rejection for want of invention. The Court of Customs and Patent Appeals, by accepting the concession of the Solicitor for the Patent Office, in effect did not pass upon the question of estoppel or double patenting.

 Counsel for Bulldog argues that Westinghouse attempted to prevent the patent from issuing, and that the patent is therefore barred by the rule of res adjudicata. Minneapolis-Honeywell Regulator Co. v. Thermoco, Inc., 2 Cir., 1941, 116 F.2d 845. There is no evidence here of any attempt made by Westinghouse to prevent the patent from issuing and therefore no consideration can be given to plaintiff's contention in that respect.

 The application of Frank, Messing and Thomson No. 659,714 disclosed four circuit breakers and five patents resulted from such disclosure. Three of these circuit breakers (Figs. 6-13, 14-15, 16-18) resulted in three patents. Two patents arose out of one of the circuit breakers (Figs. 1-5), to wit, the patent to Thomson, No. 2,102,295, later reissued as Re. No. 21,760, and the patent in suit to Frank and Messing, No. 2,285,770.

 The circuit breaker includes a number of features, some of which were invented by Thomson and others by Frank and Messing. The Thomson patent claims were limited to Thomson's features and the Frank and Messing patent claims were limited to Frank and Messing's features. While, in effect, there are two patents ...


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