Stearns v. Tinker & Rasor

252 F.2d 589, 116 U.S.P.Q. (BNA) 222
CourtCourt of Appeals for the Ninth Circuit
DecidedDecember 27, 1957
DocketNo. 15111
StatusPublished
Cited by39 cases

This text of 252 F.2d 589 (Stearns v. Tinker & Rasor) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Stearns v. Tinker & Rasor, 252 F.2d 589, 116 U.S.P.Q. (BNA) 222 (9th Cir. 1957).

Opinion

STEPHENS, Chief Judge.

This cause is here on appeal for the second time. The originál action was brought by Dick E. Stearns and The D. E. Stearns Company (hereinafter referred to as Stearns) against Tinker & Rasor, a corporation, and John P. Rasor and Leo H. Tinker (hereinafter referred to as Tinker & Rasor), seeking a judgment for patent infringement with respect to Claims 1 and 7 of United States Letters Patent No. 2,332,182. Tinker & Rasor answered, asserting defenses of invalidity, non-infringement and misuse. Tinker & Rasor also filed a counterclaim in which they sought declaratory relief of non-infringement and invalidity of the patent claims and. a judgment against Stearns for unfair competition in asserting its patent and for misusing its patent.

Following trial, the District Court dismissed the complaint on the ground that Claims 1' and 7 of the Stearns patent were invalid as not constituting invention over the prior art. No findings were made as to other issues raised by the pleadings.1 Upon appeal this Court reversed, holding that the Stearns patent is not invalid for- want of invention and remanded the cause for further proceedings. Stearns v. Tinker & Rasor, 9 Cir., 1955, 220 F.2d 49, certiorari denied 350 U.S. 830, 76 S.Ct. 62, 100 L.Ed. 741.

Pursuant to this Court’s mandate, oral argument was had in the District Court, and judgment was thereupon entered against Stearns, dismissing the complaint and sustaining Tinker & Rasor’s counterclaim. It was also held that the manufacture by individual defendants, Leo Tinker and John Rasor, of four detectors, prior to incorporation, was an infringement of Stearns’ patent, had the claims of the patent been valid. The judgment was subsequently modified to allow Stearns costs upon the first appeal pursuant to our mandate and dismissing the, counterclaim as no damage was shown to Tinker & Rasor. Both parties appeal from that judgment.

The Appeal

The Stearns patent is for an “Insulation Testing Device,” commonly called a “holiday detector,” which is used to detect flaws or “holidays” in insulating coatings, such as coal tar or asphalt enamel, applied to steel pipelines prior to their placement in the ground. The holiday detector uses the insulating quality of the coating to inspect the pipe electrically for leaks.' The detector generates a high voltage with a means for impressing this voltage across the coating between the pipeline itself, which serves as one electrode, and a traveling or exploring electrode. The exploring electrode is a part of the instrument and is moved along the length of the pipeline. If a “holiday” or flaw is encountered, current flows through the “holiday” or flaw between the pipe and exploring electrode, causing the operation of a signaling system of the instrument, thereby indicating the location of the flaw. For further explanation as to the operation and needs of such a detector, see our earlier opinion, Stearns v. Tinker & Rasor, supra [220 F.2d 53].

Claim 1 of the Stearns Patent reads as follows:

“1. An electrical exploring device for detecting defects in an insulating coating on an1 elongated member which comprises an exploring electrode in the form! of a coiled spring adapted to extend about such member and having its ends secured together to completely embrace such member, and means rotatably engaging and forming a movable electrical contact with said spring at a position remote from the surface of said member for connecting said spring to a high voltage testing circuit and for rolling said spring along such elongated member.” (Emphasis supplied.)

The dispute as to Claim 1 centers around the meaning of the phrase “and means rotatably engaging.” Tinker & Rasor argue that this phrase limits the [593]*593claim to rollers or wheels, and since their detector uses a sleeve bearing, they are not infringing the Stearns patent. The District Court held that Tinker & Ras- or’s detector is not embraced by the Stearns patent because:

(a) Pushers without wheels or rollers are disclaimed on the face of the Stearns patent;
(b) The Stearns patent on its face contemplates no alternative to a wheeled pusher;
(c) By amending Claim 1 to recite a wheeled pusher, Stearns disclaimed and abandoned all other structures as set forth in Claim 1.

We initially note that this Court previously held that the invention of the Stearns patent is that

“the spring electrode for the first time in its use in holiday detectors is rolled, instead of being dragged. In the Stearns detector, the pusher rotably engages and forms a movable electrical contact with the spring electrode so as to roll it and connect it electrically to the high voltage test circuit; and movement of the carriage longitudinally upon the pipe imparts a rolling movement to the spring electrode. And this different coaction of the elements produces a new and useful result, viz.: The detection of holidays in a more facile and efficient way. * * * ” [220 F.2d 49.]

We now advert to the reasons given by the District Court.

File Wrapper Estoppel

In D & H Electric Company v. M. Stephens Mfg., Inc., 9 Cir., 1956, 233 F.2d 879, 882, 883, this Court recently said:

“Claims of a patent must be interpreted with reference to the history contained on the file wrapper, which is nothing more than a written record of the preliminary negotiations between the applicant and the Patent Office for a patent monopoly contract.
* * * * * *
“Having asserted the novelty of the right angle principle in order to secure the patent, appellant cannot now expand his coverage to include other claims which were denied him in the proceedings before the Patent Office. This is simply the exercise of the doctrine of ‘file wrapper estoppel’ — the gravamen of which is that an applicant who acquiesces in the rejection of his claim, and accordingly modifies it to secure its allowance, will not subsequently be allowed to expand his claim by interpretation to include the principles originally rejected or their equivalents.” See also Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136, 62 S.Ct. 513, 86 L.Ed. 736, 744; Holliday v. Long Manufacturing Co., D.C., 146 F.Supp. 527; cf. Hunt Tool Company v. Lawrence, 5 Cir., 1957, 242 F.2d 347.

In the instant case the original Steam’s application tendered for the patent in suit contained fifteen claims. All but Claims 5, 6, 7, 14 and 15 were rejected. Claim 3 of the original application subsequently became Claim 1 of the amended application, original Claims 1 and 2 having been cancelled. Claim 3 as originally worded stated:

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Bluebook (online)
252 F.2d 589, 116 U.S.P.Q. (BNA) 222, Counsel Stack Legal Research, https://law.counselstack.com/opinion/stearns-v-tinker-rasor-ca9-1957.