Breese Burners, Inc. v. United States

Court of Claims

Breese Burners, Inc. v. United States

140 Ct. Cl. 9, 1957 U.S. Ct. Cl. LEXIS 121, 1957 WL 8274

CourtUnited States Court of Claims

DecidedOctober 9, 1957

DocketNo. 50191

StatusPublished

Cited by6 cases

This text of 140 Ct. Cl. 9 (Breese Burners, Inc. v. United States) is published on Counsel Stack Legal Research, covering United States Court of Claims primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook

Breese Burners, Inc. v. United States, 140 Ct. Cl. 9, 1957 U.S. Ct. Cl. LEXIS 121, 1957 WL 8274 (cc 1957).

Pincite

Opinion

Whitaker, Judge,

delivered the opinion of the conrt:

This is a suit by plaintiff for compensation for the unlicensed use of its patent on an oil burner, and also of its patent on a “stove structure” containing a similar oil burner, with the modifications and attachments necessary to fit it into a regulation Army wood-burning stove, and with the modifications to prevent it from smoking, whether burning at extreme low or pilot heat, intermediate heat, or high heat.

In August 1942 the Army requested plaintiff to undertake to convert its wood- and coal-burning tent stoves into oil-burning stoves that would not emit smoke. By May of the following year plaintiff submitted for testing such a converted stove. It was satisfactory to the Army with certain [11]*11modifications, and in the following June the Army requested a license under plaintiff’s patents. This was not granted at the time.

In the following September, the Army notified plaintiff it was to be awarded a contract for 74,620 of these burners, and the Army again requested a license. No response having been received from plaintiff, the Army wired it a few days later that the award would be withdrawn unless the license was received forthwith. A free license under plaintiff’s patents was then granted.

In the former hearing of this case the question presented was the duration of this patent license, which had been granted for the duration of the war and six months thereafter. Defendant contended it was good until six months after the treaty of peace was signed with Japan. Had defendant’s position been upheld, it would not have been liable to plaintiff for the claimed infringement of its patents on the burners purchased, some from plaintiff and some from others, after the outbreak of hostilities in Korea, as plaintiff claims in this suit. However, we held the license expired in 1946, six months after the cessation of hostilities in World War II.

Having thus been deprived of its defense that it had a license to use plaintiff’s patents, defendant now says the patents are invalid. It also says it did not infringe them; but the latter cannot be so if plaintiff’s patents are valid, because the Army purchased and used the very thing plaintiff had developed for it, and on which plaintiff had secured a patent.

The first question is the validity of the patents.

It should be here said, parenthetically, that defendant could not have asserted its claim of patent invalidity, if its claim that it had a license from plaintiff at the time it purchased the burners in question had been sustained. Its demand and acceptance of a license estops it to assert invalidity; it is an implied confession of validity. Harvey Steel Company v. United States, 38 C. Cls. 662, 685 (1903), affirmed in 196 U. S. 310 (1905); also see Automatic Radio Mfg. Co., Inc. v. Hazeltine Research, Inc., 339 U. S. 827 (1950), 85 USPQ 378, 381. But, since we have held its [12]*12license bad expired, defendant has at least a technical right to assert this defense, even if it might be said that it cannot in good grace do so.

When plaintiff received the Army’s request to convert its wood- and coal-burning tent stoves to oil-burning stoves that would not emit smoke, plaintiff undertook to adapt the burner on which it already had a patent¹ for use in the Army stove. This oil burner consisted of a pot in which there were rows of air inlet holes from top to bottom, and what is called a frusto-conic baffle,² with a hole in the center thereof. At the bottom of the pot there was an intake for oil. The top was enclosed with a lid which had an opening in the center. Just below the top of the pot there was a row of larger holes for the inlet of what is called secondary air. The combustion at high heat takes place above the top of the pot, and at low or pilot heat, within the pot.

The claims of the patent upon which plaintiff relies specify a frusto-conic baffle plate within the pot, and specify that it shall be placed above the lower row of holes and with the rim of the opening in the center of the baffle plate in substantially the same horizontal plane as the second row of holes above the bottom of the pot. Claim 3 of the patent said that the baffle plate within the pot “substantially” closed it. Claim 4 differed only in that it said that there was “a substantial clearance between the outer periphery of the plate and the wall at the time of starting the burner.”

This is a simplified description of the oil burner that was used by plaintiff in converting the Army tent stove from wood or coal to oil.

The purpose of the frusto-conic baffle within the pot was to permit the burner to operate smoke-free at very low or pilot heat.

This burner is quite similar to a burner disclosed in a patent issued to Valjean prior to the issuance of plaintiff’s patent. So far as we can tell, the differences in the two burners are that the baffle in the Valjean patent is placed between the second and third rows of the holes in the lower part of the [13]*13pot, instead of between the lowest row of holes and the second lowest row, and that the baffle plate is flat, instead of being frusto-conic, as in plaintiff’s patent. Defendant relies particularly on the Valjean patent to show that plaintiff’s patent was anticipated by the prior art.

The patent examiner thought the differences pointed out aboye were an improvement over the Valjean patent, and allowed plaintiff’s patent. There is a strong presumption in favor of the validity of any patent issued by the Patent Office. The burden is on the alleged infringer to show that the patent is anticipated by the prior art. It has not convinced us that it is, although the two structures are indeed quite similar.

The commissioner of this court, who was present at the tests of burners constructed in accordance with both the plaintiff’s patent and the Valjean patent, has found that plaintiff’s patented burner in fact was more efficient when burning at low or pilot heat than the Valjean patent burner. We have no reason to doubt the accuracy of this finding.

The commissioner in his opinion concludes that the Val-jean patent does not anticipate plaintiff’s patent. We concur in this opinion, and hold that patent No. 2,182,465 (hereinafter referred to as the ’465 patent) is not anticipated by the Valjean patent, nor by any other prior art cited by the defendant.

We do not discuss the other prior art except to say that, whereas in some of the prior art cited the baffle plate was placed between the first and second rows of holes in the burner pot, and in others a conic-type baffle was used instead of a flat baffle, none of the prior art used just that combination which plaintiff used, to wit, the placing of the baffle between the first and second rows of holes, and a frusto-conic baffle. Just why this combination worked better than the previous patent is not obvious to us, but the patent examiner thought it did, and our commissioner has found as a fact that it actually did; hence, we find that plaintiff’s ’465 patent was not anticipated by the prior art, and we hold it to be valid.

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