Transmatic, Inc. v. Gulton Industries, Inc.

442 F. Supp. 911, 196 U.S.P.Q. (BNA) 788
CourtDistrict Court, E.D. Michigan
DecidedOctober 14, 1977
DocketCiv. No. 75-71145
StatusPublished
Cited by2 cases

This text of 442 F. Supp. 911 (Transmatic, Inc. v. Gulton Industries, Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. Michigan primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Transmatic, Inc. v. Gulton Industries, Inc., 442 F. Supp. 911, 196 U.S.P.Q. (BNA) 788 (E.D. Mich. 1977).

Opinion

OPINION AND ORDER GRANTING PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT

CORNELIA G. KENNEDY, District Judge.

Plaintiff has brought this action for a declaratory judgment that patent 3210875 (hereafter referred to as “875 patent”) is invalid. Among the grounds asserted for invalidity is that the 875 patent and patent D-201380 (hereinafter referred to as “380 patent”) also owned by defendant, claim a single lighting fixture and that the 875 patent is invalid for double patenting.

Patent 875 is a utility patent on a lighting fixture invented by M. Schwenkler. It was filed on February 5, 1963, and issued October 12, 1965, for a period of 17 years. Its exclusive licensee is defendant Guitón Industries, Inc. Patent 380 is a design patent bearing the title lighting fixture, also invented by Mr. Schwenkler. It bears a filing date February 14, 1963, and was issued on June 15, 1965, for a period of 14 years. Its exclusive licensee is also Guitón Industries, Inc.

Double patenting exists if two patents are issued for the same invention. Miller v. Eagle Mfg. Co., 151 U.S. 186, 14 S.Ct. 310, 38 L.Ed.2d 121 (1894). The law is clear that an inventor is not entitled to the issuance of two patents at different times for the same invention. Preformed Line Products Co. v. Fanner Mfg. Co., 328 F.2d 265 (6th Cir. 1964). A patent grants a limited monopoly to the patentee in exchange for public disclosure of an invention. Thus the patentee must grant to the public the right to use the invention after the limited monopoly expires. Plaintiff asserts here that the 875 patent will bar the public use of the invention in the 380 patent after the 380 patent expires and that the 875 patent must be held invalid for double patenting.

Plaintiff asserts that the Patent and Trademark Office and the Court of Customs and Patent Appeals would have barred the 875 patent as a matter of law for double patenting and that this Court has the same power to dispose of the 875 patent on this record by Summary Judgment.

Plaintiff urges that there are no material issues of fact; and that the question of whether there is double patenting between the aforesaid patents can be determined from the faces of the patents themselves and their plain language without the aid of expert testimony.

Patent 380, the Design Patent, has a single claim which states “I claim: the ornamental design for a lighting fixture, as shown and described.” The patent bears a drawing which includes as figure 2 a figure identical to figure 3 of the 875 patent with the exception that the latter figure, since it relates to a utility patent, bears various numbers referred to in the specification to that patent. Defendant does not dispute the fact that these two drawings are identical. Rather it urges that the design patent claims only the lens portion of the drawing. Patent 380 states, just before the claim, “the dominant features of my design reside in the portions shown in full lines.” The portions shown in full lines are only the lens portions of the lighting fixture. The lighting source and the reflector portion of the 380 patent are shown in dotted lines. On this basis defendant asserts that the invention claimed in the 380 patent is therefore, only the lens features, while the invention claimed in the utility patent 875, is the lighting fixture as a whole including the positioning of the light source and the shape of the reflector surface. Defendant relies upon Chapter 15 of the Manual of Patent Examining Procedures. This manual, as in effect from November 1961 to 1964 provided in part Section 1503.02 Drawing:

[913]*913., “Dotted or broken line showing is also employed to show such portions of the article claimed which are not important. Such a showing should be explained in the specification by a statement that the dominant features of the design reside in the portions shown in full lines. In every case dotted line showing is notice that the portion so shown is an immaterial part of the design.” Plaintiff on the other hand relies on other language in the same section. The preceding paragraph provides:
“In general, the showing should be strictly confined to the article on which design patent protection is sought and no additional disclosure in the nature of structure to illustrate environmental use or association with other apparatus not an actual part of a design, is ordinarily permitted. Only in those cases where clarity of disclosure would be greatly sacrificed is such extraneous showing allowed, and in such cases it is permitted only by showing the same in dotted lines with a statement inserted in the specification to the effect that dotted line showing is for illustrative purposes only.”

Plaintiff asserts further that defendant may not now disclaim as not part of the 380 patent that portion of the lighting fixture not specifically included in the lens. In order to secure the patent, the file wrapper shows that an amendment was filed by the patentee’s attorney on December 12, 1963, in which the fixture of the 380 patent was described as follows:

“Applicant fixture is a ‘car card’ fixture as clearly shown- in Exhibit B. The central concave portion of the lens panel therein receives- therein a plurality of card advertisements which are illuminated for display. The opposite marginal lens areas provide concentrated light for passenger reading and indirect overhead general illumination. The fixture is illustrated in Fig. 1 in its mounted position in the passenger vehicle such as a subway car. The fixture is designed for mounting in opposite upper curved corners of the interior of the car thus placing, the concave display area in oblique relation with the lower most marginal lens area as viewed in Figs. 1 and 2 being positioned directly over the seats occupied by passengers in a horizontal plane, in the opposite marginal lens area being located in a vertical plane directly below the car ceiling to direct light outwardly across the top portion of a car for general illumination thereof.”

It was not until after this amendment was filed that the 380 patent was allowed. Plaintiff also points to portions of the file wrápper of the 380 patent as clearly indicating that it was the design for a lighting fixture which was claimed and not the design merely for the lens as defendant now asserts. Thus, the oath, which was attached to the application for the patent, states that the inventor is claiming to be the “original; first and sole inventor of the design for a LIGHTING FIXTURE, described and claimed in the annexed specification.” (Emphasis added). Figure 1 of the drawings states that it is a “perspective view of the fixture looking from below,” while Figure 2 is a “transverse section of the fixture”. It should be noted that at the same time the patentee was indeed claiming similar fixtures with convex and flat central portions of the lens, as opposed to the concave central portion of the lens in the instant patent. Both the other two applications for a design patent were withdrawn.

Plaintiffs also point to the fact that the defendant did not disclose to the patent examiner of patent 380 the fact that there was a pending utility patent application for 875.

The first issue is whether it is a question of fact or - law as to whether the design patent 380 is limited solely to the lens configuration or whether it is a patent for a lighting fixture as plaintiffs contend. This is critical because Claim 1 from the 875 patent claims:

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Cite This Page — Counsel Stack

Bluebook (online)
442 F. Supp. 911, 196 U.S.P.Q. (BNA) 788, Counsel Stack Legal Research, https://law.counselstack.com/opinion/transmatic-inc-v-gulton-industries-inc-mied-1977.