Marvin Glass & Associates v. Sears, Roebuck & Company

S.D. Texas

Marvin Glass & Associates v. Sears, Roebuck & Company

318 F. Supp. 1089, 167 U.S.P.Q. (BNA) 33, 1970 U.S. Dist. LEXIS 10746

CourtDistrict Court, S.D. Texas

DecidedJuly 30, 1970

DocketCiv. A. 68-H-516

StatusPublished

Cited by6 cases

This text of 318 F. Supp. 1089 (Marvin Glass & Associates v. Sears, Roebuck & Company) is published on Counsel Stack Legal Research, covering District Court, S.D. Texas primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Marvin Glass & Associates v. Sears, Roebuck & Company, 318 F. Supp. 1089, 167 U.S.P.Q. (BNA) 33, 1970 U.S. Dist. LEXIS 10746 (S.D. Tex. 1970).

Pincite

Opinion

SINGLETON, District Judge.

This is a patent case. United States Letters Patent No. 3,086,297 was issued for a “talking book.” Plaintiff, Marvin Glass & Associates, an Illinois partnership, is the owner of the patent. In August of 1967, plaintiff purchased the patent in suit from the inventor, Mrs. Louise A. Kay, for $17,500.00. Mattel, Inc., manufactures a “talking book” under the name “See ’N Say” talking story books. Mattel, Inc., a California corporation, was originally named as a defendant in this suit, but the complaint was dismissed as to Mattel for lack of venue. The remaining defendant, Sears, Roebuck & Company is a New York corporation licensed to do business in this District, is actually doing business in this District, and has a regular and established place of business within this District. Sears has sold the Mattel device within the District. This Court has venue under 28 U.S.C. § 1400 (1962).

Plaintiff brings this suit alleging that the Mattel device sold by Sears infringes claims one, two, three, and nine of its patent. As is often the case in patent suits, defendant raises a multitude of defensive issues. Defendant claims that the “invention” was anticipated by a prior patent, that it appeared in a prior printed publication, that it was in prior public use or sale by the inventor, that the inventor abandoned the invention, and that the inventor did not invent the subject matter of the patent in suit. Further, defendant claims that the patent is invalid for the “obviousness” of the difference between its subject matter and the prior art. In addition, defendant attacks the patented device as being inoperative; lacking in any commercialization; and, having an improper supplemental oath executed by the inventor. Finally, defendant denies that its device infringes the claims of the patent in suit.

Essentially, a “talking book” is a combination of a book and a sound-reproducing mechanism with some means of correlating the visual intelligence written on the pages of the book with the audio intelligence recorded on a sound track. Both the patented device and the accused device embody this basic concept.

Factual Background. Sometime in 1953 Mrs. Louise A. Kay invented the subject matter of the patent in suit. Mrs. Kay worked as a bookkeeper and was required to leave her child in the care of others. She sought to invent a *1092 talking book to both educate and entertain her child. Mrs. Kay, by her own admission, wa^ no engineering genius. She could only implement her idea for a talking book through a process of trial and error. She purchased several electric motors, batteries, and an erector set. She constructed a turntable out of a piece of wood. She made her own recording of various nursery rhymes. After many unsuccessful attempts, she developed a device which would correlate the recorded message with the visual message and which would stop the turntable at the end of each message.

Mrs. Kay was never completely satisfied with the finished device. She felt that the recording she had made herself was not of the best quality. She occasionally would put the batteries in backward and the turntable would rotate in the wrong direction. However, all these minor difficulties aside, there is no doubt that the device worked.

Mrs. Kay saw the potential of her “invention” and sought out a firm of patent attorneys to aid her in preparing a patent application. She took her device to her attorney, Mr. Byrne. She demonstrated it for him and it operated successfully. Mr. Byrne gave the model to lys draftsman. The drawings and specifications which were later placed in the patent application were made at this time from Mrs. Kay’s model.

On November 17, 1953, Mrs. Kay’s patent application was filed and the procedure leading to the issuance of Letters Patent was commenced. However, all was not clear sailing for Mrs. Kay. On April 19, 1955 her attorneys withdrew from prosecution of the original application, because a check from Mrs. Kay to her attorneys was returned for insufficient funds. On being advised by her attorneys that they were withdrawing from the case, Mrs, Kay called them and was given the impression that they would take care of her application.

Mrs. Kay’s attorneys did not file an answer to an office action dated December 7, 1956, and since the inventor, Mrs. Kay, did not know an answer was due, the application became abandoned as of June 7, 1957, without Mrs. Kay’s knowledge.

Sometime between the filing of the first application and the filing of the second application, Mrs. Kay tried to license her invention to the Radio Corporation of America and the Harris Group in an attempt to have these organizations promote her invention. Later, in the summer of 1961, Mrs. Kay approached Viewlex, Inc., in an attempt to license her invention under a patent which she thought all along that she had. Mrs. Kay was informed by the patent attorney for Viewlex that she did not have a patent and that her original application had lapsed. Not until that time was Mrs. Kay aware that she did not have a patent on her talking book. On August 21, 1961, a new application was filed as a substitute for the original application, which new application issued as the patent in suit on April 23, 1963. Mrs. Kay’s negotiations with Viewlex resulted in an option agreement dated November 7, 1961, and a license agreement dated September 28, 1962. Mrs. Kay’s patent application remained secret in the Patent Office. Mattel’s talking book did not come on the market until five years after Mrs. Kay’s patent issued.

On or about May 1, 1967, plaintiff, Marvin Glass & Associates, began the development of a talking book, which included a book having a plurality of pages, with a record-type sound reproducing apparatus designed to reproduce the intelligence on the pages of the book. In August of 1967 in the course of the state of the art search of educational devices in the Patent Office, plaintiff became aware of the patent in suit and after a study thereof, plaintiff purchased the patent from Mrs. Kay for $17,500.00.

The Patented Device. In order to facilitate subsequent discussion, it is appropriate at this point to set forth, in layman’s terms, what this Court understands to be the device depicted in the drawings and specifications of the Kay patent and the mode of operation of that device.

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