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United States District Court, Northern District of Illinois, E.D

March 17, 1983


The opinion of the court was delivered by: Aspen, District Judge:


Plaintiff Brandt, Inc. ("Brandt") brought this patent action against William Crane, doing business as Money Processing Consultants ("Crane"), alleging infringement of its Patent No. 4,114,804 ("the patent"), which covers a counterfeit bill detection device manufactured and distributed by Brandt.*fn1 The matter now comes before this Court on Crane's motions to dismiss and for summary judgment.*fn2 For the reasons set forth below, the motions will be denied.

According to its abstract, the patent covers a machine that counts stacks of documents, particularly legal tender, and tests the documents for certain properties of genuineness. More specifically, the machine tests bills for fluorescence and magnetic characteristics. A "suspect" bill automatically stops the machine and consequently halts the counting process. The suspect bill is concurrently isolated in an "outfeed" stacker for further investigation of genuineness.

In its complaint, Brandt claims that the patent is infringed by a counterfeit detection machine, Billcon Model H-180CF ("the Billcon machine"), which was sold by Crane to a Chicago bank. Specifically, Brandt alleges that the Billcon machine employs a means for detecting the magnetic characteristics of bills being counted that is substantially identical to the means described in Claim 16 of the patent.*fn3 Crane moves for summary judgment on Brandt's complaint, contending that the Billcon machine uses neither the means described in Claim 16 for detecting magnetic characteristics nor any other means covered by the patent.*fn4 Crane further alleges in support of both dismissal and summary judgment that Claim 16 is invalid on the ground that the claim as written is not sufficiently clear to satisfy the standards set forth in 35 U.S.C. § 112.


We first address Crane's contention that Claim 16 is invalid. Crane asserts that Claim 16 as originally filed is unintelligible "gobbledygook"*fn5 and does not meet the standard for clarity of patent claims set forth in 35 U.S.C. § 112.*fn6

  As originally filed, the challenged portion of Claim 16 reads:

   . . sensing means for sensing the presence of a
  magnetic field created by particles on said bill
  magnetized by said magnetizing means for generating a
  suspect signal when the position of the bill passing
  said magnetizing contains no magnetized particles. .
  . .

(Emphasis added). Subsequent to the filing of this litigation,
Brandt filed an application with the Patent Office for a
certificate of correction with respect to three claims, including
Claim 16. On October 8, 1982, Brandt's counsel was notified by
letter that the Patent Office had ruled in its favor, and that
"the Certificate of Correction will issue in due course." As
corrected, Claim 16 reads in relevant part:

   . . sensing means for sensing the presence of a
  magnetic field created by particles on said bill
  magnetized by said magnetizing means for generating a
  suspect signal when the portion of the bill passing
  said magnetizing means contains no magnetized
  particles. . . .

(Emphasis added). In sum, the word "position" was corrected to read "portion," and the word "means" was inserted after the word "magnetizing."

35 U.S.C. § 255 provides that clerical or typographical errors not the fault of the Patent Office may be corrected "if the correction does not involve such changes in the patent as would constitute new matter or would require reexamination."*fn7 The statute permits a minor error, when made in good faith, to be corrected. Eagle Iron Works v. McLanahan Corp., 429 F.2d 1375, 1383, 166 U.S.P.Q. 225, 231 (3d Cir. 1970).

In granting Brandt's application for a certificate of correction pursuant to 35 U.S.C. § 255, the patent examiner concluded "that no new matter has been introduced, that no reexamination is required, and that the scope of the claimed subject matter is not affected since the corrections merely reflect what was always intended by both patentees and the examiner."*fn8 After the initial decision to grant the certificate of correction was made, Crane's opposition to the application for a correction, including Crane's contention that Claim 16 was unintelligible and thus invalid, was brought to the attention of the Patent Office. A subsequent letter to Brandt's counsel from the same Patent Office official acknowledges receipt of Crane's letters in opposition, and concludes:

  Upon consideration of the opposition to the issuance
  of the certificate of correction and patentees'
  response to that opposition, the decision of August
  6, 1982, has been reconsidered but is adhered to. The

  certificate of correction will issue in due

Both in deference to the ruling of the Patent Office and upon our own examination of the entire patent materials, we refuse to accept Crane's contention that Claim 16 is unintelligible either in its original or amended form.*fn10 The two typographical errors corrected by the certificate were hardly so substantial as to convert "gobbledygook" into an intelligible claim. Crane's motion to dismiss will therefore be denied, as will its motion for summary judgment insofar as it is based on the alleged invalidity of Claim 16.


The infringement dispute centers upon whether the Billcon machine uses the same means for detecting magnetic characteristics of bills counted as does the patented Brandt machine. In the patented process, as described by Brandt,*fn11 the bills pass over a permanent magnet, causing any ferromagnetic particles present in the bills to be magnetized. The bills then pass over a sensing device that detects the strength of the magnetic field created by the magnetized portions of the bill. Since genuine currency is printed with ink containing ferromagnetic particles, a bill is stopped as "suspect" if the sensor does not detect a sufficiently strong magnetic field.

In the Billcon machine, the bills also pass over a permanent magnet. However, Crane describes the subsequent process as testing the "permeability" of the bills rather than magnetizing the bills and testing the magnetic field created.*fn12 A substance with magnetic characteristics has a high permeability, and consequently increases the "flux," i.e. the flow running between the north and south poles, of any magnet over which it passes. The Billcon machine tests the change in flux as a bill passes over the permanent magnet. A bill that does not increase the flux is stopped as "suspect," as it has a low permeability and thus is not likely to contain the ink used on genuine currency.

Despite the apparent differences in the descriptions of the two machines, Brandt contends that the Billcon machine in reality utilizes the same technique as the patented machine. Brandt argues that Crane simply uses different terms to describe the same process. According to Brandt, a permanent magnet inherently magnetizes any ferromagnetic particles passing over it and that testing the change in flux is exactly the same function as testing the strength of the magnetic field.*fn13 Crane, on the other hand, contends that the Brandt process is a two-step process, while the Billcon process is a superior one-step process.*fn14 Each side has submitted affidavits of various alleged experts in engineering and/or patent law to support its respective position.*fn15

Summary judgment is appropriate only where the pleadings, affidavits and other documents filed in this case demonstrate that no genuine issue of material fact exists and the moving party is entitled to a judgment as a matter of law. Fed.R.Civ.P. 56(c); Cedillo v. International Association of Bridge & Structural Iron Workers, Local Union No. 1, 603 F.2d 7, 10 (7th Cir. 1979). Due to the particular complexity of patent infringement cases, the Seventh Circuit has warned that "[a]lthough the Federal Rules of Civil Procedure do not limit or forbid the use of summary judgment procedures in patent cases [footnote omitted], the courts should exercise great caution before granting such a motion in an infringement action [citations omitted]." Landau v. J.D. Barter Construction Company, Inc., 657 F.2d 158, 161 (7th Cir. 1981). Moreover, it is not within the province of the Court to resolve issues of disputed fact by affidavit. Moutoux v. Gulling Auto Electric, Inc., 295 F.2d 573, 576 (7th Cir. 1961).

The papers and affidavits of the parties in this litigation reveal a dispute as to whether the Billcon machine employs the same means for detecting magnetic characteristics as the patented machine. The evaluation by this Court of the expert's submissions is critical to the matter at issue.*fn16 Consequently, Crane's motion for summary judgment on the infringement issue must be denied.

Defendant's motion to dismiss the complaint for failure to state a claim is denied. Defendant's motion for summary judgment on the complaint is denied.*fn17 It is so ordered.

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