Home/Court of Claims/Connecticut Valley Enterprises, Inc. v. United States

Connecticut Valley Enterprises, Inc. v. United States

348 F.2d 949, 172 Ct. Cl. 468
CourtUnited States Court of Claims
DecidedJuly 16, 1965
DocketNo. 505-57
StatusPublished
Cited by14 cases

This text of 348 F.2d 949 (Connecticut Valley Enterprises, 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
Connecticut Valley Enterprises, Inc. v. United States, 348 F.2d 949, 172 Ct. Cl. 468 (cc 1965).

Opinion

Per Curiam:

Pursuant to former Buie 45(a) (now Buie 57 (a)), this case was referred to Trial Commissioner Donald E. Lane with directions to make findings of fact and a recommendation for the conclusion of law. The commissioner has done so, supported by an opinion filed on June 7,1963. The plaintiff has excepted to the commissioner’s recommendation for the conclusion of law to be entered and to certain of his findings of fact. Defendant has also excepted to the commissioner’s failure to make certain findings. The parties [471]*471have filed briefs and the case has been argued orally. The court agrees with the commissioner’s findings, his opinion, and his recommended conclusion of law as hereinafter set forth, and hereby adopts the same as the basis for its judgment in this case. In accordance therewith, the court concludes as a matter of law that claim 5 of United States Letters Patent No. 2,718,568 is invalid. Judgment is entered to that effect and plaintiff’s petition is dismissed.

OPINION OP COMMISSIONER

This is a claim for compensation under 28 U.S.C. § 1498, for the unauthorized use and manufacture by and for the United States of a patented invention.

The subject matter of this case concerns a rotary relay disclosed in United States Letters Patent 2,718,568, granted to Connecticut Valley Enterprises, Inc., September 20,1955, on an application by Brock A. Somers. The patent disclosure, the patent claim in suit, and the accused relays used by the defendant are described in the accompanying findings of fact. The several issues of law involved are discussed in the following comments.

One of the important issues raised by the proofs in this case is, under what circumstances may a device which has been developed by another prior to the invention by the patentee, be considered as a part of the prior art for the purpose of invalidating the patent. Struthers-Dunn, Inc., one of defendant’s suppliers, had developed three relays which were either anticipatory or had important anticipatory features of the patent in suit prior to the invention date of the patentee. One of these, the #212 relay (defendant’s exhibit 61), was tested and approved by a prospective purchaser, and was the object of an intensive sales effort with respect to that purchaser, prior to the invention by the patentee. Another, the #220 D.C. relay (defendant’s exhibits 57, 58 and 10), was being sold and was in mass production prior to the invention by the patentee. The third, the #220 A.C. relay (defendant’s exhibits 8 and 88), had been developed and tested by Struthers-Dunn, and a sample had been delivered to the Air Force prior to the invention by the patentee. A fourth relay, a modified #212 [472]*472relay (defendant’s exhibit 60), was also developed by Struthers-Dunn, Inc., under a government contract at about the time of the patentee’s invention; however, the evidence does not establish that this relay was developed prior to the patentee’s invention. The pertinent statute governing this issue is 35 U.S.C. § 102, which reads in part as follows:

A person shall be entitled to a patent unless — (a) the invention was known or used by others in this country, * * * before the invention thereof by the applicant for patent, * * * .

This court has set forth that the burden of proving the facts of a prior knowledge defense is on the defendant and every reasonable doubt must be resolved against him. Badowski v. United States, 143 Ct. Cl. 23, 164 F. Supp. 252, 118 U.S.P.Q. 358 (1958). In the instant case the defendant has met the burden with clear and convincing evidence of operable anticipatory devices which were accessible to the public prior to the Somers invention.

The prior knowledge or use must be of a complete and operative device. Mere acquaintance with the invention is not enough if there is no reduction to practice. Badowski v. United States, supra; Block v. Nathan Anklet Support Company, Inc. 9 F. 2d 311 (2d Cir. 1925); Coffin v. Ogden, 85 U.S. (18 Wall.) 120 (1873). However, the mere fact that the device was made in a laboratory or the like is not a reason for classifying the work as an experiment as opposed to a reduction to practice as long as the device is made so as to have practical utility. Corona Cord Tire Co. v. Dovan Chemical Corp., 276 U.S. 358 (1928). Once a device is actually built satisfactorily for the intended purpose, it is more than an experiment and is a part of the prior art even if it is later abandoned. Buser, et al. v. Novelty Tufting Machine Co., 151 F. 478 (6th Cir. 1907). The #212, #220 D.C. and #220 A.C. relays were each completely constructed and tested sufficiently to demonstrate their utility as relays prior to the invention of the patentee, and thus each of these relays may be considered as properly reduced to practice at that time. The modified #212 relay, though reduced to a drawing prior to the invention of the patentee, was not completely constructed at that time due to problems in ob[473]*473taining a proper material for the header. Thus, the modified #212 relay was not reduced to practice prior to the time of the patentee’s invention and may not be considered as a part of the prior art for the purposes of showing lack of novelty in the patentee’s device.

The prior knowledge or use in order to negative novelty must also be accessible to the public. The leading case in support of this proposition is Gayler v. Wilder, 51 U.S. (10 How.) 477 (1850), in which it was held that a safe containing certain non-evident construction features, which was used by the builder and then sold to a purchaser who was not informed of the non-evident features, was not a device which could be relied upon as prior knowledge, since the knowledge was not accessible to the public. Even if the nature of the device is such that the contested features are evident from the device itself, the prior knowledge will not be anticipatory if it has been kept secret by an actual and deliberate effort. However, mere exclusion of the public from the factory is not secrecy if use of the device is made in the factory in the regular course of business. Standard Automatic Mach. Co., v. Karl Keifer Mach. Co., 18 F. 2d 326 (S.D.N.Y. 1925), affirmed 18 F. 2d 381 (2d Cir. 1927). The #212 and #220 D.C. relays clearly meet these requirements since they were openly made in the factory in the regular course of business and were freely shown to prospective customers. The #220 A.C. relay also meets these requirements since it was openly made in the factory and a working sample was delivered to the Air Force. The fact that each of these three relays is customarily mounted with its working parts in a nontransparent container should not serve to confuse this case with the problem of Gayler v. Wilder, supra. In the instant case the relays were sold or delivered to persons who were actively interested in the construction of the relays, and it maybe logically assumed that they investigated the relays sufficiently to ascertain their exact construction. The modified #212 relay here again does not meet the requirements for prior knowledge since it was maintained as a secret under a “restricted” security classification. With regard to the #220 A.C.

Free access — add to your briefcase to read the full text and ask questions with AI

Related

Gary G. Klein v. Cannondale Corporation
884 F.2d 1399 (Federal Circuit, 1989)
Rosemount, Inc., Appellee/cross-Appellant v. Beckman Instruments, Inc., Appellant/cross-Appellee
727 F.2d 1540 (Federal Circuit, 1984)
W.L. Gore & Associates, Inc., Appellant/cross-Appellee v. Garlock, Inc., Appellee/cross-Appellant
721 F.2d 1540 (Federal Circuit, 1983)
Reynolds Metals Co. v. Aluminum Co. of America
457 F. Supp. 482 (N.D. Indiana, 1978)
Alfred H. Faulkner v. Baldwin Piano & Organ Co.
561 F.2d 677 (Seventh Circuit, 1977)
Lockheed Aircraft Corp. v. United States
553 F.2d 69 (Court of Claims, 1977)
Penn Yan Boats, Inc. v. Sea Lark Boats, Inc.
359 F. Supp. 948 (S.D. Florida, 1972)
Worthington v. Southern New Jersey Newspapers, Inc.
323 F. Supp. 443 (D. New Jersey, 1970)
Tri-Wall Containers, Inc. v. The United States and St. Regis Paper Company, Intervenor-Defendant
408 F.2d 748 (Court of Claims, 1969)
North Electric Company v. The United States and Electronic Specialty Co., Successor to Iron Fireman Manufacturing Company, Intervenor-Defendant
386 F.2d 845 (Court of Claims, 1967)
Autogiro Company of America v. The United States
384 F.2d 391 (Court of Claims, 1967)
Illinois Tool Works, Inc. v. Continental Can Company
273 F. Supp. 94 (N.D. Illinois, 1967)

Cite This Page — Counsel Stack

Bluebook (online)
348 F.2d 949, 172 Ct. Cl. 468, Counsel Stack Legal Research, https://law.counselstack.com/opinion/connecticut-valley-enterprises-inc-v-united-states-cc-1965.