The opinion of the court was delivered by: Robert D. Morgan, District Judge.
By its complaint herein, plaintiff sought a declaratory
judgment that Fredman Patent No. 3,118,151 was invalid, or, if
valid, that it was not infringed by plaintiff's accused product.
Subsequent to the filing of the complaint, the Court of Appeals
for the Seventh Circuit affirmed a judgment in another cause
finding claim 3 of that patent invalid and finding claim 4
thereof valid, but not infringed by the accused products there
involved. Fredman v. Harris-Hub Company, Inc., 442 F.2d 210 (7
Cir. 1971). On August 24, 1971, 330 F. Supp. 978, this court held
claim 3 of such patent to be invalid, but denied plaintiff's
motion to the extent that it sought summary judgment that claim
4 of the patent was not infringed by plaintiff's accused product.
Meanwhile, on June 7, 1971, defendant, Harry Fredman, had filed
an application for reissue of his patent. That application was
allowed and Reissue Patent No. 27,182 was issued to Fredman on
September 21, 1971. The pleadings were then amended to substitute
Reissue No. 27,182 for the original patent as the patent in suit.
The cause is now before the court upon plaintiff's motion for a
summary judgment to declare reissue claims 3, 4, 6, 7 and 8 and
original claim 4 invalid.
Insofar as reissue claim 3 is concerned, plaintiff asserts the
contention that that claim, if held valid, would enlarge the
scope of the claims of the original patent in violation of the
provisions of 35 U.S.C. § 251. Since reissue claims 6, 7 and 8
are dependent on reissue claim 3, plaintiff argues that those
claims must fall automatically if reissue claim 3 is held to be
Section 251 provides, in pertinent part:
"* * * No reissued patent shall be granted enlarging
the scope of the original patent unless applied for
within two years from the grant of the original
patent." 35 U.S.C. § 251.*fn1
Decision of the issue presented as to reissue claim 3
requires a comparison of the scope of that claim with
the scope of the claims of the original patent.
Defendant argues that original claim 3, having been adjudged
invalid, has no scope, and that the comparison of reissue 3 must
be limited to the scope of other original claims, except original
3. That argument must be rejected. Original 3 is a nullity and it
has no scope in the context of any contention that it might be
infringed. However, it must be considered in the context of any
determination whether reissue claims enlarge the scope of the
claims of the original patent which they supersede. The
determination question is whether a contested reissue claim is
broader in scope than the apparent scope of the totality of the
claims allowed in the original patent.
The patent relates to a bed assembly, comprised of conventional
end boards, a conventional spring assembly, and a pair of
one-piece metallic side rails with a tension means
interconnecting the side rails at the center thereof, designed to
support the spring assembly firmly without the use of cross slats
and to rigidify the total bed combination.
In general, the invention was designed to avoid the problems
inherent in the use of slats, with conventional side rails, to
support the spring assembly of beds. The greatest problem in the
use of slats was the tendency of the slats to fall under the
stress of the downward flexion of the slats themselves and
outward flexion of the side rails. Also, the invention was
designed to cope with the fact that, though spring assemblies are
of a standardized width, i.e., 52 1/2 inches for double beds, the
width between the notches on each end board, in which the ends of
the side rails are supported, may vary to as much as 54 1/2
In the context of those problems recited in the patent
specifications, the Court of Appeals in Harris-Hub defined the
inventive novelty of defendants' patent. Thus, the court said:
"Plaintiff discovered an ingenious and by no means
obvious solution to the problem. He designed new side
rails which differed from the conventional in several
respects. They contained a broader horizontal ledge
which provides firm support for the spring assembly.
More significantly, they were designed to provide a
snug clamping relationship between the vertical
portions of the two side rails and the spring
assembly, with the side rails retaining their
parallelism with each ...