Ling-Temco-Vought, Inc. v. Kollsman Instrument Corporation

372 F.2d 263, 152 U.S.P.Q. (BNA) 446, 1967 U.S. App. LEXIS 7698

• Court: Court of Appeals for the Second Circuit
• Decided: January 20, 1967
• Docket: 179, Docket 30584
• Status: Published

Opinions

MEDINA, Circuit Judge:

In this case Judge Rosling, in the Eastern District of New York, on a voluminous record and after a 19-day trial, held what we shall call the Fenske patent on a “Data Plotting and Indicating Device” invalid and not infringed by the accused devices of Kollsman Instrument Corporation. Ling-Temco-Vought, Inc., the as-signee of United States Patent No. 2,-859,659, appeals. Judge Rosling’s lengthy and reasoned opinion is reported at 149 U.S.P.Q. 168.

In the early 1950’s it had become apparent that space age velocities of attacking or defending aircraft and the possibility of a swarm of missiles had rendered or would soon render obsolete the method of tracing the paths and locations of such aircraft and missiles by hand on a large plastic or other transparent screen. This method had many disadvantages, not the least of which was writing backwards with a grease pencil on the reverse side of the transparent screen, the time delay in recording the data transmitted by radar and otherwise, and the number of persons necessary to perform the operation of this system. The 1952 Hayek Patent No. 2,584,267 was never manufactured and there was no evidence that it was workable, but it did involve the conception of recording a trace of the incoming data on an opaque plate covered by removable material and transmitting the data to a screen by use of a projector. There is no doubt whatever that the development of the art in the Fenske patent solved the difficulties inherent in the Hayek device and provided a simple and relatively inexpensive method of projecting a clear image of the paths of a number of airplanes or missiles whilst at the same time preserving a permanent record. While the number and variety of patents cited as constituting the prior art is bewildering, the critical and decisive central issue in the case is whether, according to the provisions of 35 U.S.C., Section 103, as interpreted by the decision of the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed. 545, handed down on February 21, 1966, after Judge Rosling’s disposition of this case, the solution of the problem, so vital to the defense of the United States, by Fenske was “obvious * * * to a person having ordinary skill in the art” in the light of Hayek. Applying the teaching of Graham we have reached the conclusion that Fenske’s solution of the problem was not “obvious” within the meaning of the statute, and we reverse the finding of invalidity. It is fortunate, however, that Judge Rosling followed the approved procedure of deciding the question of alleged infringement. We agree with his reasoning that there was no infringement. As to one of the accused devices of Kollsman, which had proved to be a failure and was abandoned, Judge Rosling applied the de minimis doctrine. To the other accused device, because of the narrow limitation of the Fenske claims by the Patent Office, Judge Ros-ling applied the rule of file wrapper es-toppel. We affirm these rulings of non-infringement.

I. The Prior Art.

The problem which the Fenske patent and the prior art sought to solve was the visual presentation of the dynamic function of two coordinates, time and space, from data obtained from an external source, usually radar. Before the development of appellant’s device, there were only two operative methods of displaying such data. The earliest method employed an ink pen to draw a line along graph paper with either the paper or the pen or both being moved in response to the data received. Devices of this character were wholly inadequate for reasons that need no elaboration. The other method is the one described above, that is to say recording by individuals by writing backwards with a grease pencil on the reverse side of a large transparent screen.

The basic patent on which the Fenske patent operates is Hayek, No. 2,-584,267 (1952). Apparently this invention remained a paper patent but even an unworkable patent is a part of the prior art. The Hayek device operated on the same principle as a slide projector. One such projector cast a background on the viewing screen, for example, the outline of the United States. Another projector was supposed to be used for each of the objects to be tracked. The slide in the projector was covered with an opaque but removable material and the path of the object was inscribed on the slide by a stylus. As the stylus moved across the slide, the line was inscribed by the removal of the coating and was cast on to the screen by the light source of the projector. The difficulty with the Hayek device was in the mounting which was used as a stylus carrier. Hayek visualized an opaque armature, similar to a phonograph arm and needle. But this armature, when inscribing, by pecking after the manner of a woodpecker, would be interposed between the slide and the light source and the shadow it cast would obliterate the trace on the viewing screen. Since the function which this device was to serve required that the plotted line both be continually evolved and always wholly in view, this defect made the Hayek device unworkable.

The Fenske patent solved this problem by abandoning the armature altogether. Instead, the stylus was mounted on a transparent plate such as glass or plastic which was larger than the slide so that the edges of the glass plate would not appear on the screen. This entire transparent plate placed in a position parallel to the plate covered with opaque removable material then became the carrier and did not obstruct the beam of light in the projector when it was inscribing.

In addition to Hayek, appellee relies on several additional supplemental references which it claims when taken together with Hayek fully anticipated the Fenske patent. The principal such patent was Henry, No. 1,119,597 (1914). The Henry patent was said to cover a slide which had upon it a single dot. This dot, when the slide was inserted in a projector, would appear on a background and when the slide was moved, the dot could be used as a pointer. The invention which the Henry patent actually covered was the means by which the slide could be moved and thus there is some doubt that it should be given any consideration whatever as a part of the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 35, 86 S.Ct. 684, 15 L.Ed. 2d 744. Reading Henry for all that it is worth only shows a method of projecting superimposed images with one slide not completely interfering with the image produced from the other slide.

The Massinger patent, No. 2,508,413 (1950), concerns a method of marking a slide while it is under a microscope. Massinger placed a dome which might, but need not, be transparent under the slide and mounted a marker on the top of the dome. As a marker, Massinger suggested the letter “o” from a rubber stamp. The dome could then be moved about and raised to mark the slide.

A further reference relied upon by Kollsman was an unpatented improvement made by it on one of the old pen and paper indicators. One type of such device employed a continuous roll of paper which passed below a rectangular opening in the face of the instrument. The pen was attached to a metal plate which in turn was attached to the instrument at the top and bottom of the opening and moved horizontally. This plate wholly obstructed the view of the line being drawn. To alleviate this problem, Kollsman made a plate partially out of glass.

Kollsman cites other patents of more or less relevance to the question at hand but we think it is not necessary to consider them in any detail because the parties seem to agree that the references given above are controlling.

II. Validity.

Under Sections 101 and 102 of the patent laws, an inventor is entitled to a patent if he discovers a “new and useful improvement” on a machine that was not “known or used by others.” There can be little doubt that the Fenske patent satisfies the relatively liberal tests of these Sections. Section 103 indicates that Sections 101 and 102 prevent patentability only where the invention was “identically disclosed” by the prior art. It is abundantly evident that the use of a transparent plate as a carrier for a stylus to inscribe on a projector slide was not “identically disclosed” by the prior art.

The important issue on this appeal, then, is whether appellant’s invention would have been “obvious” to a person having ordinary skill in the pertinent art. This Court has recently set out the reasoning to be employed in resolving an issue of obviousness under 35 U.S.C., Section 103, applying the teaching of Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684 (1966). Formal Fashions, Inc. v. Braiman Bows, Inc., Docket No. 30580, decided December 16, 1966, 369 F.2d 536.

We turn then to the differences between the references cited above and the Fenske patent. Claim 6, agreed to be typical, reads:

Data-plotting and projection-indicating means comprising a substantially transparent plot member provided with an opaque coating of removable material, a second substantially transparent member arranged in parallelism with the first member, a stylus carried by the second member in marking engagement with the removable material on the first member, means to move said members relatively to each other to cause the stylus on the second member to remove material from the coating on the first member and thereby form a transparent trace on the first member according to the directions of such movements, and means to direct a light beam through both the transparent member and the trace on the first member to illuminate the trace, and means to project an illuminated image of said trace.

It is clear that if the Fenske patent merely substituted one material for another and the substituted material performed in a readily predictable manner because of its well known properties that distinguish it from the formerly used material, appellant has a mere “substitution of materials” patent which is invalid. Pierce v. Muehleisen, 226 F.2d 200 (9 Cir. 1955); Goodwin v. Borg-Warner Corp., 157 F.2d 267 (6 Cir. 1946); Application of Mason, 240 F.2d 362, 44 CCPA 727 (1957).

But such is not our case. The Fenske patent employs a method of inscribing that is conceptually different from Hayek in its use of a transparent plate instead of an opaque armature. This conceptual improvement represents a sufficient advance over Hayek to be patentable. Rich Products Corp. v. Mitchell Foods, Inc., 357 F.2d 176 (2 Cir. 1966); Application of Hortman, 46 CC PA 814, 264 F.2d 911 (1959). And see United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).

Furthermore, while we have noted that an unworkable patent is a part of the prior art, the dormancy of the Hayek patent, as compared with appellant’s success, provides some support for the validity of the Fenske patent. Pacific Contact Laboratories, Inc. v. Solex Laboratories, Inc., 209 F.2d 529 (9 Cir. 1953); Trabon Engineering Corp. v. Dirkes, 136 F.2d 24 (6 Cir. 1943); Ric-Wil Co. v. E. B. Kaiser Co., 179 F.2d 401 (7 Cir. 1950).

To invalidate the Fenske patent, then, we must find in the prior art some teaching that a solid armature used for inscribing may be replaced by a transparent plate. Neither the Henry nor the Massinger patent serves this function. Neither of these patents concerns data recording devices¹ or inscribing.

Kollsman’s experts testified that as a supplementary reference they had no preference as between Henry and the other references. But the Patent Examiner had before him both the Hayek and the Henry patents. While the presumption of validity that a patent enjoys may be slight in the light of the normal procedures of the Patent Office, this presumption is heightened by a showing that the prior art was adequately considered. The Examiner paid sufficient attention to the Fenske claims to reject them in part based on the prior art before him and to make suggestions for alterations. Obviously, he concluded that the Fenske patent represented an advance. In view of this history that conclusion must be given some weight here. Nasco, Inc. v. Vision-Wrap, Inc., 352 F.2d 905 (7 Cir. 1965); Lyon v. Bausch & Lomb Optical Co., 119 F.Supp. 42 (W.D.N.Y.1953).

Nor do we think that appellee’s substitution of a glass plate for a metal plate supporting an ink pen when taken with Hayek render the Fenske patent “obvious.” Kollsman’s device does show that an inking pen may be mounted on a glass plate, but it does not show that a transparent plate may be used to replace an opaque armature and it does not show the use of a transparent stylus carrier in a projection device.

In view of the file wrapper history we must construe the Fenske patent narrowly. Whether or not it is to be classified as a combination patent or an improvement patent or both is in this case largely a matter of semantics. As Judge Learned Hand phrased it in B. G. Corp. v. Walter Kidde & Co., 79 F.2d 20 (2 Cir. 1935): “All machines are made up of the same elements * * * But the elements are capable of an infinity of permutations, and the selection of that group which proves serviceable to a given need may require a high degree of originality. It is that act of selection which is the invention.” See also Duo-Flex Corp. v. Building Service Co., 322 F.2d 94 (5 Cir. 1963); Doran Coffee Roasting Co. v. Wyott Mfg. Co., 267 F.2d 200 (10 Cir. 1959); Coleman Co. v. Holly Mfg. Co., 233 F.2d 71 (9 Cir. 1956); Application of Stewart, 42 CCPA 937, 222 F.2d 747 (1955). Whatever be the aggregate the whole must exceed the sum of the several contributing elements and that is precisely what the Fenske patent does. The concept of mounting a stylus on a moving transparent plate was previously unknown and this invention exceeds the sum of all the prior art. As said by Judge Anderson in an opinion reported at 132 F.Supp. 123, and sustained by this Court in Electric Pipe Line v. Fluid System, 231 F.2d 370 (2 Cir. 1956), “[a]lthough the Lines patent combines a number of known elements, the method of operation is new and the specific result achieved is new and beneficial.” See also McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381 (10 Cir. 1965); International Mfg. Co. v. Landon, Inc., 336 F.2d 723 (9 Cir. 1964); Technical Tape Corp. v. Minnesota Mining & Mfg. Co., 247 F.2d 343 (2 Cir. 1957).

In the Formal Fashions case, this Court observed that “[t]he proof on this issue [of obviousness], then, should tend to show what would be obvious to a hypothetical mechanic.” It is apparent that the more numerous the references and the more remote the cited art from the subject matter of the patent in suit, the less likely it becomes that a person having ordinary skill in the art would have arrived at the result reached by the patent in suit. Ric-Wil Co. v. E. B. Kaiser Co., 179 F.2d 401 (7 Cir. 1950); Application of Pennington, 44 CCPA 789, 241 F.2d 750 (1957).

In Graham the Supreme Court allowed that such secondary considerations as the need in the industry, unsuccessful research and commercial success might be utilized by the courts to “guard against slipping into use of hindsight” and “to resist the temptation to read into the prior art the teachings of the invention in issue.” 383 U.S. at 36, 86 S.Ct. at 703. Of course, as the Supreme Court went on to hold, where the invention is minor and non-technical, such considerations are of little value but we think that in this suit where the components of sophisticated instruments are being interchanged and the result is a highly successful device of substantial importance to our national security, and therefore the incentive to invent is presumably high, such factors are appropriate for our consideration. See Rich Products Corp. v. Mitchell Foods, Inc., 357 F.2d 176 (2 Cir. 1966).

The patent in suit was granted in November, 1958, although demonstrations had been made prior to that date. By 1961, systems utilizing the Fenske patent had been installed in several missile ranges including White Sands and Cape Kennedy. Colonel Richard E. Barr who was responsible for recommending the installation of this device was awarded the Air Force Commendation Medal. Literature emanating from the military clearly demonstrates the great importance of this device and its usefulness to our defense effort. Perhaps, as Judge Rosling noted, the contribution of the Fenske patent to this system was not one of great magnitude. But without that contribution, the system would not work at all.

Finally, it is not without significance that, during the very pendency of this action, Kollsman, relying on the narrow scope of Claim 6 of the Fenske patent, proceeded to patent several devices, two of which copy the details of Fenske, except that in one the stylus is mounted on two ribbon thin plates of glass instead of the one prescribed in Fenske and in the other of which the stylus is supported by wires without the use of any plate at all. This is an awkward position from which to attack the validity of the Fenske patent. Kurtz v. Belle Hat Lining Co., 280 F. 277 (2 Cir. 1922); General Knit Fabric Co. v. Steber Machine Co., 194 F. 99 (2 Cir. 1912); United States Pipe & Foundry Co. v. James B. Clow & Sons, Inc., 205 F.Supp. 140, 157 (N.D.Ala. 1962).

III. Infringement.

Soon after Kollsman learned of the successful operation of the Fenske patent, it set out to construct a similar instrument, as we have just indicated. With respect to the device with the two thin plates of glass, Judge Rosling found as a fact that the only public demonstration of this structure was to government representatives of the Bureau of Ships. While we have found the record somewhat ambiguous on this point (Compare page 1203 with pages 1331-32 of the trial record), we are bound by this finding as it is not clearly erroneous. Maytag Co. v. Murray Corp. of America, 318 F.2d 79 (6 Cir. 1963). That being the case, appellant’s claim of infringement from these devices must fail. Under 28 U.S.C., Section 1498, no suit for patent infringement may be maintained against a government contractor for the use of a patented article without the permission of the patent owner.

On this appeal, appellant contests dismissal under Section 1498 by showing the wide range of non-governmental uses for which the instrument in question might allegedly be adapted. But Judge Rosling concluded, correctly we think, that the application of the de minimis doctrine was appropriate on the facts of this case and that appellee should not be deprived of its Section 1498 defense. Neff Instrument Corp. v. Cohu Electronics, Inc., 269 F.2d 668 (9 Cir. 1959); J. & G. Development Co. v. All-Tronics, Inc., 198 F.Supp. 392 (E.D.N.Y.1961) and cases cited. It is conceded that no actual sales of the glass mounted stylus were made by Kollsman and the mere advertising of a patented device is not itself an infringement. Knapp-Monarch Co. v. Casco Products Corp., 342 F.2d 622 (7 Cir. 1965). Further, Judge Rosling found that appellee’s experimentation with the glass mounting was unsuccessful and that it has apparently permanently abandoned the use of such a device. Compare Northill Co. v. Danforth, 51 F.Supp. 928 (N.D.Calif.1942).

On abandoning its use of the glass mounting, appellee developed a wire stylus carrier. Two wires were stretched diagonally across a frame and the stylus was supported at the intersection of these crossed wires. These wires, while opaque, are defocussed and apparently do not appear on the viewing screen. Although we have held that the Fenske invention is patentable on the narrow ground that the act of replacing an opaque armature with a transparent plate was not obvious, appellant here asserts that the Fenske patent should be read broadly enough to include appellee’s crossed wire carrier.

This claim properly might be rejected by the plain words of the Fenske patent which claims only a “substantially transparent mounting plate” which is described as “a flat transparent sheet or plate of rectangular form * * * preferably made of a heat-resistant and nonshatterable material, such as Pyrex glass, or one of the clear plastics, such as Lucite.” While it is undoubtedly true that patents are not to be read with undue strictness and that minor variations will not defeat a claim of infringement, Technical Tape Corp. v. Minnesota Mining & Mfg. Co., 247 F.2d 343 (2 Cir. 1957), Coats Loaders & Stackers, Inc. v. Henderson, 233 F.2d 915 (6 Cir. 1956), it is equally true that a patentee will not be heard to claim what he was forced to abandon to obtain his patent, Graham v. John Deere & Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), Shepard v. Carrigan, 116 U.S. 593, 6 S.Ct. 493, 29 L.Ed. 723 (1886), Texsteam Corp. v. Blanchard, 352 F.2d 983 (5 Cir. 1965).

It is evident that if the patentability of appellant’s invention depends on its being distinguishable from an opaque support, as we have held, the crossed wire support cannot be found to infringe the Fenske patent. Further, as it appears from the file wrapper that the inventor pressed this same distinction on the Patent Examiner, appellant is now estopped to assert equivalence. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684 (1966); Doran Coffee Roasting Co. v. Wyott Mfg. Co., 267 F.2d 200 (10 Cir. 1959).

Reversed on the issue of validity of the Fenske patent No. 2,859,659, and affirmed on the issue of infringement.

1 . The mere fact that a cited reference is not drawn from the data projection field does not, however, remove it from the pertinent prior art, although under Section 103 there is some limit on how far afield a party may go in gathering the references relied upon as constituting the prior art. Cf. Graham v. John Deere Co., 383 U.S. 1, 35, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). Nevertheless, the more remote the reference from the subject matter at hand, the less persuasive it becomes on the question of obviousness. At some point, the bringing together of knowledge held in widely diverse fields itself becomes invention. United States v. Adams, 383 U.S. 39, 51, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).