Petition — Electronics Corp. of America v. Scully Signal Co.
Supreme Court brief1978
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Supreme Court, U.S
FILED
: } APR 17 1978
MICHAEL RODAK, JR., CLERK
dn the
Supreme Court of the United States
Ooctoser Term, 1977
No 77-1475
ELECTRONICS CORPORATION OF AMERICA,
PETITIONER,
v.
SCULLY SIGNAL CORPORATION,
RESPONDENT.
PETITION FOR WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
Cuartes KE, Prunp
Counsel for Petitioner
75 Federal Street
Boston, Massachusetts 02110
(617) 542-8492
Blanchard Press, Inc., Boston, Mass. — Law Printers
TABLE OF CONTENTS
Page
SD Weis, 2. Sole vated s o% acekee and be 1
Jurisdiction ..... Saree odin RRs DARED ed wee ee 2
3. ee Ree ee eee Tee 2
Constitutional Provisions, Statutes, and Rules Involved 4
Statement | PPP ere OTee re its +
Reasons for Granting the Writ fosse ale, $accis] ae
Conclusion GR ns 8d Se 2 Ne Pere 18
Appendix A:
Opinion of the United States Court of Appeals
mee te Pas Ga es. oS dl RS A- 1
Judgment of the United States Court of —
for the First Cireuit ..... .. A-20
Order Denying Petition for Rehearing, Ja anuary
18, 1978 A-21
Order of the Supreme Court of the United States
Extending Time to File Petition for Writ of
Ce «0068 ok ce SRE dete A-22
Opinion of the United States District Court for
the District of Massachusetts, February 7,
1977 op. Ree, Chl ee, Seas hae’ A-23
Judgment of the U nited States District Court
for the District of Massachusetts, February 8,
1977 | OR Ere — es
Appendix B On ee ee ee ee A-63
TABLE oF CITATIONS
Cases
Air Shields, Inc. v. Aix Reduction Co., Inc., 331 F. Supp.
673 (N.D. Ill. 1971), aff’d., 474 F.2d 1351 (7th Cir.
1973) | 16
Beckman Instruments, Jae. v. Chentvenics, Inc., 428
F.2d 555, 165 USPQ 355 (5th Cir. 1970) 15, 16
ii Table of Contents
Page
Blonder-Tongue v. University of Illinois Foundation,
402 U.S. 313 (1971) ..... Scaaeeduen 10, 17
Lear, Inc. v. Adkins, 395 U.S. 653 (1969) Meena) 6, 9
Maurice A. Garbel, Inc. v. Boeing Co., 546 F.2d 297 (9th
Rg IR RIB Pe Sasa ete 5 oe Peer 16
Multi-District Litigation involving F rest Patent, In re:,
308 F.Supp. 1383, 185 USPQ 729 (D. Del. 1975),
aff’d., 540 F.2d 601 (3d Cir. 1976) _.. | 12
Norton v. Carborundum Co., 397 F.Supp. 639, affirmed,
530 F.2d 435 (1st Cir. 1976) ..... _. 14, 15, 17
Precision Instrument Manufacturing Co. v. Automotive
Machinery Co., 324 U.S. 806 (1945) ; : 9
Triplett v. Lowell, 297 U.S. 638 (1938) | 17
Union Carbide Corp. v. Feltrol Corp., — F. Supp —,
170 USPQ 482 (C.D. Cal. 1971) eos 7
Walker Process Equipment, Inc. v. Food Machinery
& Chemical Corp., 382 U.S. 172 (1965) _.. ‘9
W.F. Altenpohl, Inc. v. Gainesville Mach Co., — F.
Supp. —, 185 USPQ 492 (N.D. Ga. 1975) | 7
Constitutional Provisions
United States Constitution, Art. 1, §8, cl. 8 4
Statutes
28 U.S.C. §1254(1) 2
35 U.S.C. §102 . .. | | 4, 6, 9, 14
§103 _.. ” 4, 6, 14
Federal Rules of Civil Procedure, Rule 15(b) 1, 2, 4, 16
ae re ee ees -
In the
Supreme Court of the United States
Octosper Term, 1977
No.
ELECTRONICS CORPORATION OF AMERICA,
PETITIONER,
v.
SCULLY SIGNAL CORPORATION,
RESPONDENT.
PETITION FOR WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE FIRST CIRCUIT
Petitioner prays that a writ of certiorari issue to re-
view that part of the judgment of the United States Court
of Appeals for the First Cireuit which affirmed the district
court’s denial of defendant’s motion to amend its answer
under Fed. R.Civ. Proc. 15(b) or conditionally, for a
new trial.
Opinions Below
The opinion of the District Court for the District of
Massachusetts was not reported. The opinion of the Court
2
of Appeals for the First Cireuit is reported at —— F.2d
——, 196 USPQ 657. The opinions are printed in Appen-
dix A, imfra, p. A-1 and p. A-23.
Jurisdiction
The judgment of the Court of Appeals was entered De-
cember 29, 1977, printed, infra, p. A-20. Respondent peti-
tioned for rehearing which was denied by an Order en-
tered January 18, 1978, printed, infra, p. A-21. Mr. Justice
Brennan granted petitioner’s motion to extend time to
file this petition until April 18, 1978, printed, infra, p. A-22.
The jurisdiction of this Court is invoked under 28 U.S.C.
1254(1).
Questions Presented
This is a suit for patent infringement, in which evidence
of the misconduct of the plaintiff before the Patent Office
was first discovered by defendant during the trial, and
introduced in evidence without any objection by the plain-
tiff.’ Defendant (petitioner herein) at the close of the
evidence moved orally to amend its answer to conform to
the newly discovered evidence and to allege fraud on the
Patent Office. At the request of the District Court, defen-
dant filed a written motion under Rule 15(b) to amend
the answer. In view of plaintiff’s motion to strike the
evidence of plaintiff’s misconduct, defendant also moved
conditionally for a new trial. The District Court denied de-
fendant’s motion on the grounds that the issue was not
1 While in footnote 7 of the District Court opinion the court
stated ‘‘It is not fair to say that plaintiff did not object,’’ the
fact of the matter is that the plaintiff did not object on any grounds
to the introduction of the evidence in question. Plaintiff argued,
rather, that there was no duty to disclose such prior art to the
Patent Office at that time, the issue presented by this petition.
3
fully tried and refused to reopen the evidence. The Court
of Appeals affirmed.
The questions presented are:
1. Whether the decisions of this Court which
state that an applicant for patent has an uncompromis-
ing duty of utmost candor in proceedings before the
Patent Office admit of a rule of law which holds that
the duty to disclose admittedly relevant prior art
arises only for evidence showing exact anticipation in
a single prior art reference, 35 U.S.C. §102, and no
such duty exists as to obviousness 35 U.S.C. $103.
2. Whether the conflict in the Circuits in apply-
ing the criteria for finding fraud on the Patent Office
will be resolved by this Court particularly as to
whether there was a lower standard for disclosure
which was acceptable prior to the mid-1960’s, absent
proof of the ‘‘state of mind”’’ of the patentee.
2. Whether fraud clearly established as to the broad
monopoly expressly defined in the broad claims of a
patent can be made innocuous by the trial court
through the device of holding that the patent is limi-
ted to its narrower claims to a lesser monopoly, thus
immunizing the applicant from the consequences of
such fraud, especially where the broad monopoly
of the other claims has been asserted in the industry
throughout the entire seventeen year period of the
patent grant.
4. Whether a motion to amend the answer made
promptly after evidence of fraud on the Patent Of-
fice was newly discovered and admitted in evidence
without objection, can be denied on grounds extra-
neous to the issues raised by the motion.
4
Constitutional Provisions, Statutes
and Rules Involved
Article I, §8, cl. 8, of the Constitution, the patent statutes
relating to validity over the prior art 35 U.S.C. §§102, 103
and Fed. R. Civ. Proc. Rule 15(b) are involved. The text
of each of these provisions is printed in Appendix B.
Statement
Because both the trial Court and the Court of Appeals
referred to certain conduct of defendant and defendant’s
counsel as influencing the decision of each court on the
issue of fraud, a brief reference to the initial proceedings
at the trial is included in the statement of the case. See
the trial court’s treatment of those proceedings in Appen-
dix A, pp. A-23 et seq., infra.
This suit for patent infringement was filed October 1,
1968 and Order of Notice under Local Rule 22 for dismis-
sal for want of prosecution was entered January 13, 1975.
On November 21, 1975, the Senior Circuit Judge for the
First Circuit, sitting as the trial court, held a pretrial con-
ference. During that conference, the court set the trial to
commence on December 15, 1975, later set for December
30th. The court denied a motion of defendant’s lead counsel
for a continuance on December 29th. When the case was
called at 10:00 a.m. on December 30th, defendant’s lead
counsel was engaged in an adjacent courtroom as defense
counsel in the trial of a $750,000 Federal Treasury Note
theft case, at which time the judge was giving the charge to
the jury. The trial judge in the criminal case had previously
entered a protective order providing that defendant’s lead
trial counsel would not engage in any other matter until that
trial was completed. Patent counsel for defendant did not
appear at 10:00 a.m., on December 30th, because he had
been instructed by defendant not to appear without lead
counsel. Rather, an associate of the lead counsel appeared
5
who explained the circumstances surrounding the absence of
lead counsel to the court. On the representation by that as-
sociate that defendant’s lead counsel would be the principal
examiner of the witnesses, the Court granted a continu-
ance until 2:00 p.m. the afternoon of December 30th. The
trial began that afternoon. The plaintiff’s case proceeded
until the time for cross-examination of plaintiff’s first
technical expert witness, at which time patent counsel,
rather than lead counsel, conducted the cross-examination.
The trial court noted that such was not the representation
on which the continuance from 10:00 a.m. to 2:00 p.m.
had been granted, and stated that it would reserve action
against defendant (for contempt) until close of trial.
Midway through trial, defendant’s lead counsel became
ill, and during the continuance granted on that account,
defendant discharged its patent counsel. When trial re-
sumed, the Court heard a motion by new patent counsel
for a two week continuance and for the introduction into
evidence of two prior art patents, referred to as Dowling
I and Dowling II. The Court accepted the Dowling pa-
tents in evidence but granted a continuance only until noon
the next day at which time the trial resumed, with the
defendant being represented by new patent counsel. The
trial proceeded that afternoon and was concluded in one
additional day.
Just prior to resumption of defendant’s case in chief the
inventor of the patent in suit, Mr. Rowell, showed defen-
dant’s counsel three memoranda he had written in 1954
and other documents showing that prior to filing the pa-
tent application, Mr. Roweli and plaintiff’s counsel were
fully aware of the relevance and materiality of the Dowl-
ing patents. The documents showed correspondence with
a prospective licensee, Minneapolis Honeywell Company,
whose patent counsel noted that this prior art ‘‘fully an-
ticipates’’ the invention of the patent in suit. On the next
6
(and last) trial day, defendant asked for a conference in
chambers to disclose the newly discovered memoranda and
other evidence as relating to possible fraud on the Patent
Office. Thereafter, such documents and testimony thereon
were offered and received in evidence without objection
by plaintiff, whose counsel admitted that he was aware of
the Dowling patents and other evidence during the prose-
cution of the patent in suit. Direct and cross-examination
of Mr. Rowell, the inventor, showed that Mr. Rowell had
written certain memoranda attempting to distinguish his in-
vention from Dowling II in 1954 and had revised his opinion
in 1954 to agree, in part, with Honeywell. All such cor-
respondence and memoranda were known tc plaintiff’s
counsel while the patent application was pending.
At the close of trial, defendant moved to amend the
answer, based on the newly discovered evidence which had
been admitted without objection, to allege that plaintiff
had. been guilty of misconduct in failing to bring the Dowl-
ing patents, and evidence relating thereto, to the attention
of the Patent Office during the prosecution of the patent
in suit. The court requested that this motion be in writing,
with a supporting memorandum. By letter to counsel, the
Court invited plaintiff to file a motion to strike the Dowl-
ing patents. Defendant filed its motion to amend the answer
to add a counterclaim based on the alleged fraud and con-
ditionally moved for a new trial if the Dowling patents and
materials relating thereto were stricken.
The plaintiff did file a motion to strike, but that motion
was denied on the authority of Lear, Inc. v. Adkins, 395
U.S. 653 (1969). |
The court denied defendant’s motion to amend or for
reopening the evidence based on its view that in the 1950’s
the express duty of disclosure related only to references
which invalidated the patent under 35 U.S.C. §102, (anti-
cipation) and not to references which invalidated the patent
rece tn
7
under §103, based on obviousness. The court also held that
two of the cases cited by defendant instead of supporting
its view that the full duty of candor before the Patent Of-
fice existed in the 1950’s and was not merely developed
by court decisions since the mid-1960’s rather supported
the court’s view that there was no duty to cite non-antici-
patory prior art in the 1950’s, even though such prior art
would invalidate the patent under 35 U.S.C. §103. The
court stated that ‘‘I regret to note that these cases
|(Union Carbide Corp. v. Feltrol Corp., 170 USPQ 482
(C.D. Cal. 1971) and W.F. Altenpohl, Inc. v. Gainesville
Mach. Co., 185 USPQ 492 (N.D. Ga., 1975)] are totally
miscited.’’ Appendix A, p. A-35, infra. The court held that
the amendment to the answer would require reopening of
the evidence, since the issue as to whether plaintiff was
guilty of equitable fraud required proof of ‘‘state of
mind,’’ and because of the court’s broad view of the duty
of candor which applied in the 1950’s. The court declined
to reopen the evidence based on what it considered to be
defendant’s misconduct:
Nothing about defendant’s conduct, or showing, per-
suades me to [reopen the evidence.] By deliberate
disregard of its obligations to the court by its Decem-
ber 30th conduct, and by its discharge of patent
counsel in the middle of trial and incommoding the
court for reasons that existed, to defendant’s knowl-
edge, well before trial, defendant has exhausted my
discretion * * *.Consequently, even if plaintiff were
guilty of equitable fraud, the issue is not open, and
T assume the contrary.
In lieu of contempt proceedings for defendant’s instruc-
tions to original patent counsel not to attend trial im the
absence of lead counsel, the trial court awarded attorney’s
8
fees to plaintiff in the amount of $5,000. That award was
not appealed to the Court of Appeals by defendant, is not
challenged in this petition, and is irrelevant to any of the
issues faised by the petition.
The Court of Appeals affirmed the trial court’s findings
of invalidity of the patent, and held that the trial court
did not exceed its discretion in denying defendant’s motion
to amend the pleadings or reopen the evidence. In af-
firming the trial court’s denial of defendant’s motion,
the Court of Appeals relied upon the following factors
which petitioner here specifies as error relevant to the
issue of fraud :—
1) That further evidence would be necessary to
resolve the issue of fraud, which requires proof of
state of mind;
2) That the Dowling patents:
a) did not anticipate the Rowel ’214 patent
in suit, and/or
b) would not have affected the prosecution of
the patent, and
ec) that closer prior art was considered by the
Patent Office ;
3) That the issue either had not been tried or was
tried without plaintiff’s consent; and
4) That ECA in its post trial briefing on the is-
sue had attempted to mislead the court as to the ex-
tent of an inventor’s duty of disclosure at the time the
Rowell patent was prosecuted.
9
Reasons for Granting the Writ
This petition seeks review of the lower courts’ refusal to
deal with a palpable case of fraud on the Patent Office
which was proved at trial by evidence directly from the
inventor of the patent in suit, where the facts of knowl-
edge of the references and memoranda of their relevance
and concealment were not denied by the plaintiff. The
District Court absolved plaintiff of the consequences of the
fraud by holding that, short of anticipation under 35 U.S.C.
$102, there was no duty to disclose prior art known to be
materia] despite this Court’s decisions which hold the pa-
tent applicant to an uncompromising duty of utmost can-
dor. Precision Instrument Manufacturing Cv. v. Automo-
tive Machinery Co., 324 U.S. 806, 816 (1945) ; Walker Proc-
ess Equipment, Inc. v. Food Machinery & Chemical Corp.,
382 U.S. 172 (1965). The Court of Appeals affirmed the
District Court’s refusal to treat the issue on the merits as
not exceeding the lower court’s discretion.
There can be no doubt about the proof of fraud. The in-
ventor, plaintiff and plaintiff’s counsel (the same attorney
for plaintiff throughout all Patent Office and Court pro-
ceedings here involved) knew of the Dowling patents, the
inventor’s memoranda thereon and the Honeywell attor-
neys’ opinion of full anticipation in 1954 before and im-
mediately after the patent application was filed. The trial
Court held under Lear v. Adkins, supra, that the inventor
was free to attack his own patent. Once in evidence, the
inventor’s testimony corroborating both his and plain-
tiff’s attorney’s knowledge of the facts in 1954, and the
1954 memoranda, establishing the materiality of that knowl-
edge, establish the fraud and consequent damage to defen-
dant. No state of mind need be proved beyond that self-
evident from the withholding of this evidence from the
Patent Office continuously during the prosecution of the
10
patent (1954-1957), the withholding of the same references
from the defendant during the attempt to license defendant
(1956), and the withholding of these references from the
court during the time period from the filing of the com-
plaint in the present litigation in 1968, through the filing
of a similar suit against a different defendant in 1972, and
the trial of this case up to the last trial day. All of these
acts were conducted without disclosing the Dowling pa-
tents and memoranda, despite their relevance as shown
by the comments of both the inventor and Honeywell’s pa-
tent attorney.”
On appeal and by petition for certiorari,’ plaintiff has
continued to urge that it has done nothing wrong and that
its patent is valid. Thus the vexatious expense of unwar-
ranted patent litigation analyzed in Blonder-Tongue v.
University of Illinois Foundation, 402 U.S. 313 (1971)
has been imposed solely because of the fraud on the pa-
tent Office and continues because the lower courts have
refused to acknowledge fraud when it is plainly established
on the record.
On this issue the trial court committed an error of law;
the court said:
2 The trial court erroneously attributed significance to the fact
that Honeywell eventually did take a license from plaintiff. The
Honeywell license is a prime example of the economic evils of the
power to litigate invalid patents reviewed in detail in Blonder-
Tongue, infra. After stating in 1954 that the Dowling II patent
‘*fully anticipates Seully’’ [i.e., the Rowell invention here in suit]
Honeywell took a license in 1960 (on six U.S. and six Canadian
Seully patents) after extended negotiations subsequent to issue
of the patent in 1957. The definition of the royalty-bearing struc-
ture in the lie2nse was so narrowed to recite specific circuit de-
tails of the Honeywell apparatus that, as to such very narrow
scope, Dowling II did not anticipate. Defendant’s equipment
would have avoided all liability under the definition of the Honey-
well license. Hence as broadly asserted against defendant, the
patent cannot be said to be valid by virtue of the Honeywell ac-
ceptance of a license. As so asserted, the fraud perpetrated by
withholding the Dowling patents from the Patent Office is unabated
whatever the reason Honeywell eventually took a license.
3 As advised, to be filed by plaintiff. ,
on ee ae ere
11
When defendant was speaking of claiming fraud on
the Patent Office | said I thought that in the 1950’s
the express duty of disclosure related to section 102,
anticipation, and the extent of duty to volunteer
merely possible relevant art was less defined than at
present. (emphasis added)
That the Dowling II patent was not ‘‘merely possibly rel-
evant art’’ is clear from the categorical statement in1954
by Honeywell that it ‘‘fully anticipates Seully’’ and the
proofs which show the Dowling II patent provides the
prior art teaching of all of the essential features of the
broadly claimed invention, ineluding:
(1) The feedback control of the light shutter in re-
sponse to operation of the system. This issue was ex-
plicitly before the patent examiner and explicitly re-
cited as the basis for rejecting claims because the
claims did not confine themselves in the feedback fea-
ture. There was no prior art considered by the Patent
Office which contained the feedback feature, and thus
the Dowling II patent which does disclose this feature,
was more relevant than the art cited by the Patent
Office on a contested issue.
(2) Fail safety for the entire checking system in-
cluding the sensor (photocell).The argument that this
feature was not disclosed in any prior art was relied
upon heavily before the Patent Office and both lower
courts in attempts to distinguish the Rowell ‘‘inven-
tion’’ over the prior art cited by the patent examiner.
(3) The alleged inventive combination of Rowell in
using ‘‘precise simulation’’ and a fail safe monitor of
the signal interruptions. Dowling II teaches the sub-
stitution of its own Fig. 8 as the fail-safe monitor of
the circuit interruptions thus eliminating the unsafe
12
failures of the simple galvenometer-type monitor of
Dowling I, and making the substitution of other prior
art fail-safe decoders readily available for the patent
examiner to apply against the Scully claims if he had
had Dowling Ii before him as prior art.
(4) ‘‘Precise simulation’’ of flame monitoring on
which Scully has based the validity of the patent ts
expressly disclosed in Dowling II where the apparatus
disclosed is specifically suggested for use in monitor-
ing a burner mantle flame or lamp in a lighthouse.
The trial court overlooked this disclosure in Dowling
II, yet that court found no other shortcoming in the
Dowling II reference which would prevent Dowling Il
from being a complete anticipation of at least the
broad claims of the patent in suit. In fact, that court
did not hold that Dowling II failed to anticipate at
least the broad claims of the patent in suit, even
erroneously assuming ‘‘precise simulation’’ was not
disclosed in Dowling II. Rather, the court said that
that limitation in the broad claims might be enough
to avoid anticipation. See the court’s footnotes 11 and
15, Appendix A, infra, pp. A-33 and A-40-41.
It is for the patent examiner to decide the relevance and
anticipatory effect of such references based on complete
candor on the part of the applicant, rather than having the
issue reserved for some later date with industry, mean-
while, subject to the dominance of the broadly drawn patent
asserted to cover the very type of circuit which the appli-
cant himself withheld from the patent examiner. /n re
Multi-District Litigation involving Frost Patent, 308 F.
Supp. 1383, 185 USPQ 729 (D. Del. 1975), aff’d. 540 F.2d
601, (3rd Cir. 1976).
The trial court held (and the Court of Appeals specifi-
cally noted) that the Patent Office considered numerous
Mo ee a ee
ee ee ee ee
” enn ALE th it, OO 3 SiO ni re ew ae
13
patents far more relevant than Dowling, a holding that is
clearly erroneous in view of the items (1)-(4) in the preced-
ing paragraph. Based on this erroneous finding the court
concluded
‘¢.. 1 cannot imagine that citing Dowling would have
affected the Patent Office proceedings’’
However, the error of the trial Court’s view that Dow-
ling would have been inconsequential in the Patent Office
prosecution was established by the trial court’s own incon-
sistent position when it stated (Appendix A, infra, p. A-
40-41, footnote 15) :
In effect, by referring to the specifications, 1 con-
sider the invention disclosed to be that described in
claim 20. Every diagram and all of the descriptions
in the patent are of such devices. If I read the patent
to include the full generality of claim 14, then, unless
the matter of precise simulation of the event, see post,
were found relevant, ’214 would be invalid over various
prior patents such as Werner, Ludwig, and the Dow-
ling patents, as well as the closer art which I find to
invalidate even a narrowed reading of the patent, see
post. (emphasis added)
The trial court itself thus held tae Dowling patents to in-
validate the broad patent claizas. As stated in item (4),
above, Dowling II explicitly ieaches the ‘‘precise simulat-
ion’’ identical to the alleged infringing device used for
burner flame monitoring, since Dowling states that the de-
vice can be used to monitor ‘‘incandescent mantles or lamps
in lighthouses or the like’’ (Dowling II is dated 1925-27,
an era when lighthouses were lit by a burner flame). Thus
even the use of ‘‘precise simulation’’ as argued exten-
14
sively to the lower court as a basis for validity of the pat-
ent could not accurately have been argued to the Patent
Office as a distinguishing basis if Dowling had been made
of record there.
It may be that the narrowing of a patent by the Court to
avoid invalidity over certain prior art can, at times, be
justified if the claims are ambiguous and can be inter-
preted to be not confined to the scope of the actual inven-
tion. It is submitted, however, that this court-made rule of
interpretation has no applicability to the present case. When
the issue is fraud on the Patent Office, a patent should not
be narrowed by the court for the express purpose of negat-
ing fraud, because that would encourage applicants to min-
imize disclosure of relevant prior art to the Patent Office,
and thus maximize the broad scope of patents issued by
that Office. The decisions of the lower courts in this case
are inconsistent with and impermissibly expand the law of
Norton v. Carborundum, 397 F. Supp. 639, affirmed, 530
F.2d 435 (1st Cir. 1976). There the first question before
the Court was whether claim 1 of the patent was broad
enough to encompass a bauxite mix. If it was, the patent
was unenforceable for failure of the patentee to cite a per-
tinent prior patent of which he was aware; if the claim was
not so broad, the patentee was not considered guilty of in-
equitable conduct. The court, interpreting the claim nar-
rowly, held there was no inequitable conduct.
By contrast, in the present case, there is no question that
at least some of the claims, e.g., claim 14 and 17-19, were
so broad as to be invalidated by the withheld Dowling pat-
ents as acknowledged by the trial Court. While the trial
Court prefers to read the patent narrowly, it is not proper
to do so by ignoring the broad claims, which are believed to
be anticipated under Section 102 of the Statute and un-
questionably are invalid under Section 103. The Court’s
opinion in essence confirms that claims which are not re-
oR a ee et ee ee ee bee,
nore aetietee t eene.
15
stricted to the scope of claims 20 or narrower, i.e., claims
14 and 17-19, were granted patent protection, and such
claims would not have been obtained but for the withholding
of the pertinent art. Having cbtained invalid claims by
withholding prior art, the patent is invalid and unenforce-
able, and this result is not avoided if there are other, nar-
rower claims which are not invalidated by the art withheld.
Beckman Instruments, Inc. v. Chemtronics, Inc., 428 F.2d
999, 165 USPQ 355 (5th Cir. 1970). As the trial judge stated
in the trial Court opinion in Norton C. v. Carborundum Co.,
supra:
‘*T am in full accord with the court in Beckman Instru-
ments, Inc., that if misconduct prevents enforcing the
claim as made, it is no answer that it would not have
operated against a narrower one. That, however, is not
this [Norton] case because I have interpreted the claim
itself as being narrow.’’
The situation discussed by the trial judge as not being
presented in the Norton case, and which was presented in
the Beckman case, was precisely the situation before the
lower courts in this case. It is submitted that the narrowed
view of the Norton case has no pertinence here, and the
patentee cannot excuse his misconduct before the Patent
Office on the grounds that it only applied to the broader
(and thus more powerful) claims. Were it otherwise, pat-
ent applicants would be free to practice fraud before the
Patent Office by maintaining, in addition to their broad
claims, narrow claims as to which an argument could be
later made that the withheld prior art might net apply. In
the present case, the significance of withholding the Dow-
ling patents, particularly Dowling II, from the Patent Of-
fice during prosecution of the patent is such that there is no
viable basis for the court to contend that the withholding
and misrepresentation with respect to the Dowling IT pat-
16
ent was inconsequential. See also the holding of the Court
of Appeals for the Fifth Circuit in Beckman Instruments,
Inc. v. Chemtronics, Inc., 439 F.2d 1369 (5th Cir. 1970),
cert. den. 400 U.S. 956 (1970); of the Court of Appeals of
the Ninth Cireuit in Maurice A. Garbel, Inc. vy. Boeing Co.,
546 F.2d 297 (9th Cir. 1976), and Air Shields, Inc. v. Air
Reduction Co., Inc., 331 F. Supp. 673 (N.D. Til. 1971), aff’d.
474 F.2d 1351 (7th Cir. 1973), each of which applied the
duty of candor enunciated by this Court in Precision In-
struments, supra, to prosecution before the Patent Office.
There is no justification for the drastic pruning of the
patent monoply by disregarding broad, fraudulently ob-
tained claims and exonerating the patent owner on the
grounds that he did not practice fraud before the Patent
Office with regard to some more limited claim contained
within the patent. The opposite trend should be the rule
since the patent owner enjoys the benefit (and the invol-
ved industry labors under the threat) of the broad patent
monopoly so long as the fraud goes undiscovered. At the
day of reckoning to award the patent owner whatever resi-
dual monopoly the court can fashion which is purportedly
free of the fraud charge negates the very rule of conduct
demanded by this Court. The fact that the broad monopoly
was exercised with full knowledge of its infirmity should
not only strike the patent im toto but guarantee restitution
to the persons injured by the knowing assertion of the fraud-
ulantly obtained monopoly.
Defendant has been damaged financially by this unwar- |
ranted litigation based on a worthless patent which would
not have issued from the Patent Office if plaintiff had not,
knowingly and deliberately, withheld the Dowling patents
from the Patent Office. Rather than rewarding such behav-
iour by plaintiff, the lower courts should compensate de-
fendant for its loss. The defendant’s motion under Rule
15(b) was proper and directed to that end. This petition
a —
Se ET cree ete tes nee
17
seeks to have the Court establish authoritatively that an
abused patent monopoly, as in this case, calls for appropri-
ate sanctions.
The economic consequences of fraud on the Patent Office
are at least as onerous as the ability to relitigate patent va-
lidity struck down in Blonder-Tongue v. University of Illt-
nois Foundation, In that case, this Court was urged to sus-
tain the rule of mutuality of estoppel, Triplett v. Lowell,
297 U.S. 688 (1938) by the same counsel (who admitted it
would be against his client’s interest in that case) that now
urges on the Court validity of the Scully patent despite its
total invalidity shown by the lower court opinions which ig-
nored the fraud issue. By pursuing validity to this Court the
plaintiff relies both on the error with which the First Cir-
cuit interprets this Court’s decisions requiring candid dis-
closure before the Patent Office and the procedural obsta-
cles that have been raised te prevent consideration of the
issue in this particular case. The present petition for cer-
tiorari is necessitated by the erroneous rule of law now esta-
blished in the First Circuit by the appellate affirmance in
this case and in Norton, supra.
For the reasons given above, it was error for the courts
below to deny defendant’s motion to amend the Answer
to conform to the evidence. In view of plaintiff’s egregious
misconduct before the Patent Office, defendant is entitled
to the relief sought in its motion to amend. The needless
expense and time consumed in this litigation would never
have been occasioned if plaintiff had not withheld the Dow-
ling patents from the Patent Office.
* As the trial court said: ‘‘There were questions that I, myself,
would have liked to ask, had that issue been pleaded before trial
instead of afterwards.’’
18 | A-1
Conclusion APPENDIX A
For the foregoing reasons, the petition for a writ of cert-
iorari should be granted. | United States Court of Appeals
Respectfully submitted, | For the First Circuit
Cuartes E. Prunp 7 No, 77-1133
Counsel for Petitioner | SCULLY SIGNAL COMPANY,
75 Federal Street | PLAINTIFF, APPELLANT,
Boston, Massachusetts 02110 v.
(617) 542-8492 ELECTRONICS CORPORATION OF AMERICA,
DEFENDANT, APPELLEE,
No. 77-1144
SCULLY SIGNAL COMPANY,
PLAINTIFF, APPELLEE,
v.
ELECTRONICS CORPORATION OF AMERICA,
DEFENDANT, APPELLANT.
APPEALS FROM THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MASSACHUSETTS
{Hon. Barry Aupricu, U.S. Circuit Judge]
Re no ee or me oe
Before
Corrin, Chief Judge,
Lay, Circuit Judge,**
CAMPBELL, Circuit Judge.
Robert H. Rines, with whom Rines & Rines was on brief, for
Seully Signal Company.
Charles E. Pfund, with whom Dike, Broastein, Roberts, Cush-
man & Pfund, Sewall P. Bronstein, and David G. Conlin were
on brief, for Electronics Corporation of America.
** Of the Eighth Circuit, sitting by designation.
A-2
December 29, 1977
CaMPBELL, Circuit Judge. This suit for infringement
of a 1957 patent was brought in 1968 by Scully Signal Co.
(Scully), the assignee of the patent and its licensor. Hlec-
tronics Corporation of America (ECA), the defendant,
alleged both noninfringement and invalidity. The patent
expired before trial, leaving only damages at issue. The
case was tried in December, 1975 and January, 1976, and
at the end of the presentation of evidence ECA moved to
amend its pleadings to allege fraud against the Patent
Office by Scully because of a failure to reveal allegedly
anticipatory patents, which in turn would entitle ECA to
damages. The district court held that ECA had infringed
the disputed patent, and went on to hold that the patent
had not been anticipated within the meaning of 35 U.S.C.
§ 102? but was invalid for obviousness under 35 U.S.C.
§ 103. Denying ECA’s motion to amend the pleadings,
the court awarded attorneys fees to the plaintiff because of
‘exceptional’? conduct on the part of ECA.
On appeal, Scully vigorously challenges the district
court’s determination of obviousness, accusing the court
of substituting hindsight for a proper assessment of the
level of ordinary skill in the pertinent art at the time of the
supposed invention. ECA in a cross appeal seeks to over-
turn the district court’s denial of its motion to amend the
pleadings, although it does not appeal the award of attor-
neys fees to Scully.
Obviousness under 35 U.S.C. § 103
The. patent in question, No. 2,798,214, W.G. Rowell,
Checking Technique and System (‘‘Rowell ’214’’), de-
1The court said, in a comprehensive opinion,
“[The] section 102 defense . . . must be made out by a
single invention. See Columbia Broadcasting Sys. v. Sylvania
Elec. Prod., Inc., 1st Cir., 1969, 415 F.2d 719, cert. denied,
396 U.S. 1061. As will become apparent in my discussion of
the prior art, I find no such single anticipatory invention.’
A-3
scribes a technique designed to incorporate ‘‘fail-safe’’
features into machines or systems whose unsafe failure
would present’ dangerous consequences. The technique
combines a monitoring system, a failure simulator, and a
self-checking circuit that will activate an alarm and take
corrective measures whenever either the unsafe condition
appears or the checking system itself breaks down. As the
word ‘‘fail-safe’’ implies, the system is designed to shut
off the machine it regulates whenever anything goes wrong,
even if the machine itself is operating as intended.
Yowell assigned the patent to his employer, Scully, which
in turn sought licensees to manufacture devices applying
the patented system. In particular Scully offered nonex-
clusive licenses to ECA and Minneapolis-Honeywell Reg-
ulator Co. (Honeywell), the principal manufacturers of
burner control devices. While the patent does not show a
burner monitor application, the district court found that
a use ‘‘would be obvious to anyone minimally skilled in
the art,’’ and this is not disputed. After satisfying itself as
to the validity of the patent, Honeywell took a license in
1960. The license was limited to
‘t]he field of flame detection in which a flame sens-
ing means is arranged to detect the presence or ab-
sence of flame, provided the flame sensing means is
connected to the input of an electrical amplifier hav-
ing a feedback in the form of a relay controlling a
chopper switch means or other chopper member dis-
posed at or before the input of the amplifier for con-
trolling the feedback so that the relay normally is
caused to repetitively cycle upon the flame sensing
means detecting a flame or detecting the absence of
flame, as the case may be, there being a further switch
means controlled by the relay to alternately and repeti-
tively connect a capacitor to a source of energy to
charge the capacitor and then to connect the charged
A-4
capacitor to an electrical device (load) normally to
maintain the electrical device (load) continuously
energized only so long as the relay continues to
eycle.’’
A diagram used by the district court, which we attach
as Appendix A, illustrates this description more clearly.
When the detector (5) picks up the light, an amplifier (6)
transmits the signal to relay coil (7). When so charged,
the relay coil holds the relay arm (8) in place with contact
(9), which completes a circuit between the battery term-
inals (B+) (B-), a storage capacitor (11), and a resis-
tor (12) that regulates the current. When the interrupter
(3) blocks the light, relay (7) receives no charge, the first
circuit is broken as arm (8) drops to contact (10), and a
new circuit is formed between the capacitor (11), the re-
sistor (12), and the load relay (14). A small capacitor
(13) draws off some of the current from this circuit. As
long as current flows through it, the load relay (14) holds
the arm (15) to contact (16), which may be a ground or
some other circuit, signalling all is well. If current were to
stop passing through the load relay (14), however, the arm
(15) would drop to contact (17), setting off the alarm
(18) and cutting off oil to the burner.
Current passes through the load relay (14), holding off
the alarm, as long as a proper cycle between the two
circuits is maintained. The continual charging occurs be-
cause the capacitors (11) and (13) each have the property
of storing and dispensing current, depending on whether a
stronger power source is attached to the circuit. When the
light is on, capacitor (11) is storing energy from the bat-
tery (B+) (B-), and capacitor (13) is giving off current
to the load relay (14). When the light is off, capacitor (11)
is giving off current to charge the load relay (14) and
associated capacitor (13). Because each capacitor has only
a limited storage capacity, however, each must be re-
. Ae) kt tee cen re ee ee ee
A-5
charged continually by alternate completion of the two
circuits. The choice of the components determines the prop-
er rate for the cycle. Although the diagram does not show
it, the solenoid (1) that operates the shutter (3), which
in turn controls the alternating periods of light and dark-
ness that trigger the respective circuits, can itself be hooked
into one of the circuits so that it may respond to the cycle
it controls. This ‘‘feedback’’ feature was mentioned in
the patent, although the invention was meant to be used
with or without this modification, and incorporated into
the Honeywell license.
ECA refused Scully’s offer of a license, citing the added
cost of installing the self-checking system in burner moni-
tors already on the market. In 1967, however, ECA brought
on to the market its own self-checking burner monitor,
the Fireye UVP-4S. The ECA device differed in material
respects from that sold by Honeywell only in that it relied
on an independent timer for the flame-interrupting shutter
rather than on feedback.
Seully’s licensing arrangement with Honeywell contin-
ued until its expiration in 1975, Honeywell’s payments
totalling over $400,000 during the fifteen year period. It is
notable that in 1954 Honeywell itself drew Scully’s at-
tention to the two patents which ECA alleges Scully
fraudulently concealed from the Patent Office, and there-
after accepted a license notwithstanding its awareness of
them.
At trial the district court considered several patents
which were alleged to anticipate Rowell ’214. These in-
cluded No. 2,659,880, A.E. Dodd, Apparatus for Detecting
Recurrent Circuit Operation (Dodd); No. 2,605,334, C.H.
Hines, Circuit Integrity Indicating System (Hines); Ger-
man Patent No. 898,564, Ludwig, Photoelectric Security
Installation (Ludwig); German Patent No. 696,166, Wer-
ner, Circuit for Signal Devices (Werner); No. 1,631,021,
A-6
J.J. Dowling, Thermionic Indicating Means Responsive to
Light Variations (Dowling II); No. 1,561,837, J.J. Dow-
ling, Thermionie Indicating Means Responsive to Light
Variations (Dowling I). The last four were not cited to the
Patent Office during the prosecution of Rowell ’214, al-
though Honeywell had informed Scully of the two Dowling
patents in 1954,
Dodd and Hines, both of which were cited to the Patent
Office, referred to a code-following circuit? as prior art.
A code-following circuit described by a witness to have
existed in the late 1940’s is diagrammed in Appendix B.
Relay CTR, analogous to relay (7) in the Honeywell de-
vice, alternately receives and does not receive signals from
some external device. When charged, CTR switches the
attached arm so as to complete a circuit between B+ and
B-, a battery or other power source, a capacitor OC, and a
resistor R. When not charged, CTR causes a circuit to be
formed between capacitor C, resistor R, and relay TR, with
resistor R, wired parrallel to relay TR. The effect of
wiring resistor R, across relay TR is to delay the release
of the relay during the period capacitor C is being charged
and is not charging relay TR. The substitution of the
resistor R, for the capacitor (13), the only distinguishing
feature between the two circuits, was held to be irrelevant,
us expert testimony indicated the desired effect of a delayed
release load relay could be achieved in a variety of ways,
any of which would have been obvious to one of ordinary
skill in 1954. As a result, the district court held that Row-
ell ’214’s self-checking circuit was not by itself inventive.?
* Such cireuits were used over the years to operate signals to
indicate the presence of a train in a section of track, the word
““eode’’ denoting the sending of pulses of electricity rather than
a steady current through the rails. The patent in issue details,
as one of its possible uses, an application to railroad signalling.
3The court said, ‘‘the simple fact is that the cireuit used in
plaintiff’s patent is identical to circuits disclosed in the prior art.”’
This conclusion seems plainly to be warranted on the record.
A-7
It formulated the sole remaining question as ‘‘whether it
was obvious to use such a circuit in a flame-out monitoring
device in a manner that achieved precise simulation of the
predetermined event that the monitor is to detect.’’
The other patents considered by the district court, while
employing self-checking circuits of varying degrees of
efficacy, were relevant mainly because of the monitoring
and interruption means that generated the on-off cycle
transmitted to the checking circuit. Werner and Ludwig
both involved space intrusion detectors, such as burglar
alarms, designed to set off an alarm if some object inter-
fered with a beam of light being sent into a photoelectric
cell. Werner reflected the beam with a mirror from the
light source to the detector; the portion of the beam be-
tween the mirror and the detector was projected across
the protected space. The mirror was regularly jerked out
of position, creating a steady pulse of light that went into
the detector. Ludwig achieved the same effect through a
circuit that switched off the light source upon receipt of
the beam at the detector. Both systems embodied a feed-
back principle. The two Dowling patents were designed to
detect variations in the intensity of light, such as occlusion
caused by fog. A pierced disk which rotated in front of the
beam of light was used in Dowling I. Dowling I substituted
a vibrating prong, something like a tuning fork, which
oscillated in the path of the light beam. The stimuli to
the prong were controlled by the signals generated by the
pulses of light, thereby embodying yet another form of
feedback.
At trial Scully emphasized that the Rowell device, in
exercising the monitoring system, simulated precisely the
event to be detected by the monitor, namely disappearance
of the flame. All other self-checking systems, it was main-
tained, created some other kind of interference with the
operation of the detecting circuit that, because of a lack
A-8
of exact correspondence with the looked for event, failed
to achieve the same degree of reliability. In particular,
Ludwig and Werner rather than blocking the beam of light,
as would the intruder sought to be detected, turned off the
light signal completely. Further, the Dowling systems,
which were meant to detect variations in light intensity, em-
ployed instead rhythmic but total blockage of the beam.
The district court held, however, that the distinction was
without a difference, as Scully had failed to indicate how
Rowell’s ‘‘precise’’ simulation of the flame-out in any
way enhanced reliability in comparison to the other systems.
The court further held that the combination of a light in-
terruption device, already considered prior art, with a
self-checking circuit, also considered prior art, did not
amount to a patentable invention.
Although Scully knew about the Dowling patents during
prosecution of the Rowell patent, this prior art was not
disclosed to the patent office. ECA contended that the
Dowling IT patent, by employing feedback in its monitoring
ireuit, completely anticipated Rowell ’214 and would have
-esulted in the latter patent’s invalidation if seasonably
presented to the Patent Office. Rowell’s feedback feature
was not, however, essential to the invention and in other
respects the Dodd and Hines patents, which were cited,
seem more closely to have anticipated the Rowell system.
Both Dowling patents were in the public domain for more
than a decade before Rowell applied for his patent. Rowell
in 1954 wrote two analyses for Scully of the Dowling
patents, each of which contended that his invention con-
tained substantial safety features not found in the earlier
devices. The second of these memoranda, of which ECA
made use during trial, accepted for the sake of argument
that the self-checking circuit in Dowling IIT was as safe
as that in Rowell ’214 but went on to indica‘» other features
A-9
of the earlier system that made it less safe than his own
invention. Honeywell was sufficiently convinced by the
memoranda to accept the Scully license.
It does not appear that anyone thought much of the
Dowling patents until Rowell became embroiled in an
unsavory dispute with Scully in 1970. Impugning his own
invention and prior statements, Rowell surprisingly as-
serted that one of the Dowling patents was entirely anti-
cipatory of his own invention; and undertook on this
basis to sabotage Scully’s suit against ECA. The district
court nonetheless found, supportably we think, that, ‘‘giv-
en that plaintiff did in fact cite to the Patent Office
numerous patents far more relevant than Dowling, to
either a broad or narrow reading [of the Rowell patent],
I cannot imagine that citing Dowling would have affected
the Patent Office proceedings.’’
While ‘‘the ultimate question of patent validity is one
of law’’, Graham v. John Deere Co., 383 U.S. 1, 17 (1965),
this court has emphasized the highly factual context of a
determination of § 103 obviousness, and the strong defer-
ence due a district court’s reasoned judgment on the
issue :
‘More often . . . obviousness as an ultimate question
cannot meaningfully be separated from those factual
determinations which are peculiarly within the trial
court’s province, such as the credibility of the ex-
perts. The district court’s supported findings on ebvi-
ousness will therefore normally stand unless manifest-
ing a misconception of the correct legal standard.’’
Forbro Design Corp. v. Raytheon Co., 532 F.2d 758, 763
(1st Cir. 1976). Seully contends, however, that the district
court, although reciting the proper legal standard for deter-
mining obviousness, in fact applied the wrong criteria,
namely obviousness to the court itself. Seully goes so far,
indeed, as to deny that the record itself contains am;° evi-
A-10
dence that would support the finding of obviousness, argu-
ing that the court simply ignored the ‘‘years of expertise
in the nuances of these circuits’? of the Patent Office,
which also had Hines and Dodd before it. Further, the
court is said to have overlooked the demonstration ‘‘that
the best the skilled engineers in this art had been able to
evolve, over the past twenty years, despite their attempts
to previde against unsafe failures, still ran the risk of
... failures, that simply cannot fail unsafe with the Rowell
technique.’’ The entire technical community is said to
have recognized the novelty and importance of the Rowell
system. The district court is said to have ruled by ‘‘fiat”’,
piecing together a multitude of prior inventions and pa-
tents by hindsight, in violation both of the admonitions
of jurists and the Constitution itself.
If the district court were guilty of such misdirected
thinking we would agree that error had indeed occurred.
Scully, however, ignores the substantial evidence support-
ing the district court’s finding that the relevant techniques
were all known to the art in 1957 when the patent was ob-
tained, and the lack of persuasive evidence that Rowell’s
assemblage of these bits and pieces reflected, in the instant
application at least, a novel insight.> According to Pascoe,
4 Appellant’s counsel writes in his brief that in ‘‘thirty years
of practice, and in some courts mighty hostile to patents . . . [he]
has never seen such a travesty of technclogy, let alone justice.
He goes on to speak sarcastically of the district court’s “‘great
insight’’, and, after other comments in the same vein, to urge
reversal in order to uphold ‘‘the intellectual integrity of the
judicial system.’’ While later in this opinion we shall deal with
this mode of argumentation, which we regard as intolerable, we
mention it here merely to make it clear that we did not miss the
int. :
ms The district court correctly approached the claimed invention
as a combination of known elements. After citing Anderson’s-
Black Rock, Inc. v. Pavement Salvage Co., 396 US. 57, 61 (1969)
to the effect that a combination patent must achieve ‘‘an effect
greater than the sum of the several effects taken separately i
it cautioned against reading this language too literally, saying,
A-11
a Westinghouse engineer, the same ingenious self-check-
ing circuit forming the backbone of the patented system
had been employed in railroad signalling devices in the
1940's; it is referred to in the Dodd patent and in the
Hines patent. Scully does not seriously contest this,® but
argues that since no one ‘‘had thought of the application
of this kind of technique, suitably modified, for burner
control safety monitoring’’, there was invention.
In response, the district court inquired whether using
the precise event to be detected, in this case the light from
the burner flame, with a light interrupter and detector in
combination with the non-inventive self-checking circuit,
was inventive. It concluded not. It would not be inventive
to adopt a self-checking circuit to monitor the presence or
absence of light, nor ‘‘to effect the pulsing needed to uti-
lize the self-checking circuit by use of a shield or similar
light ocelusion device to cause light periodically to strike
the detector.’’ The latter technology was sufficiently re-
vealed in both Dowling patents and in Werner and Ludwig.
Pascoe, moreover, testified to a contemporary use of a light
source, interrupter, and a detector with a self-checking
cirenit to signal the presence of a train.
The court then turned to Seully’s emphasis upon the
patent’s teaching ‘‘that the precise predetermined event
which the device is to monitor should be repetitively simu-
lated to produce the checking pulse.’’ Seully presented this
as, in effect, the synergism which could transform a combi-
“*by hindsight, a combination patent will always achieve, strictly,
no more than the sum of the parts’’. The court’s formulation was
that, ‘‘invention may lie in perceiving the possibility and making
the selection so as to achieve something not a priori, mechanically,
obvious’’. The district court was clearly well aware that combina-
tions may be inventive, and that hindsight can be dangerous.
*To the extent a claimed invention is directly anticipated in
the prior art, it is of course not inventive. See Shanklin Corp. v.
Springfield Photo Mount Co., 521 F.2d 609, 617 (1st Cir. 1975),
cert. denied, 424 U.S. 914 (1976).
A-12
nation of familiar elements into an invention. The court
was unimpressed — warrantably, we think. It could find
little evidence that the concept of precise simulation was
itself the key to some advance over the prior art in avert-
ing unsafe failures. To the extent blockage of light from
the flame to the detector was a species of ‘‘precise simula-
tion’’, it found it to be just another obvious way of em-
ploying light interrupters — merely ‘‘the recognition of
an attribute of an existing device’’. Hence ‘‘at least as
adapted to a nonfeedback burner flame monitor, the patent
is invalid.’’
Given the level of technology which the court was en-
titled to find existed, we believe it was warranted in con-
cluding that utilization of the burner flame itself, the in-
terrupter, the detector, and the self-checking circuit was in
1957 within the competence of engineers ordinarily skilled
in the art. To be sure, this presupposes knowledge of self-
checking circuits in the railway field and of systems in
other industries with common problems, such as burglar
alarms, fog detectors, and so forth. Rowell’s patent, how-
ever, encompasses such a range of applications: indeed
it describes a railway application but does not specific-
ally describe a burner flame use at all. We think the
‘‘art to which said subject matter pertains’’, as defined
in § 103 would embrace such devices.
On appeal, Scully does little to meet the district court
on these grounds. Rather it belittles the district judge as one
who has, never in his life, upheld a patent,” and urges
7 Decisions in which the judge in question has either determined
an invention to be non-obvious or, writing for the circuit court,
has upheld such a determination include Spound v. Mohasco Indus.,
Inc., 534 F.2d 404 (1st Cir.), cert. denied, 429 U.S. 886 (1976) ;
Borg-Warner Corp. v. Paragon Gear Works, Inc., 355 F.2d 400
(1st Cir. 1965), cert. denied, 384 U.S. 935 (1966); United Shoe
Machine Corp. v. Industrial Shoe Machinery Corp., 335 F.2d 577
(1st Cir. 1964), cert. denied, 379 U.S. 990 (1965), rev’g 223 F.
Supp. 826 (D. Mass. 1963); Wilson Research Corp. v. Piolite
a
A-13
courts to stay out of matters that they don’t understand.
Its most credible argument, but one we also find deficient,
is that the district court paid no attention to the ready
commercial acceptance of Honeywell’s licensed device, and
its evidence of enthusiastic trade comment.
We would agree that secondary factors — especially
were they to show ‘‘long felt but unsolved needs, failure
of others’’, Graham v. John Deere Co., supra, 383 U.S.
at 17 — could be important evidence in a case such as this,
but we do not agree that Scully’s evidence measures up to
the claims of its counsel. In Hand’s famous compendium
of ‘‘signposts’’ in Reiner v. I. Leon Co., 285 F.2d 501, 504
(2d Cir. 1960), cert. denied, 366 U.S. 929 (1961), the ques-
tions, ‘‘how long did the need exist’’ and ‘Show many
tried to find the way’’, appear side by side with the ques-
tion of success. That Scully and Honeywell were the first
to adapt and market a self-checking system in the burner
industry, and that the product was safer than previous
devices, says little about the inventiveness of the system
in a technological sense. Beyond indication that earlier
burner monitors were less reliable, it was not brought out
what sort of an effort had been mounted in the burner
industry to develop a comparable system. The industry’s
failure earlier to develop a self-checking system could as
well have been due to lack of interest or appreciation of such
a system’s potential or marketability, as to want of tech-
nical know-how. Indeed, there was evidence that ECA, a
major producer, refused a license initially because of a
belief (whether or not misguided is beside the point) that
what it had sufficed.
Plastics Corp., 327 F.2d 139 (1st Cir. 1963); Progressive Engin-
eering, Inc. v. Machinecraft, Inc., 273 F.2d 593 (1st Cir. 1959) ;
St. Regis Paper Co. v. Winchester Carton Corp., 410 F. Supp.
1304 (D. Mass. 1976); Norton Co. v. Carborundum Co., 397 F.
Supp. 639 (D. Mass. 1975), aff’d, 530 F.2d 435 (1st Cir. 1976).
A-14
Scully introduced a variety of news clippings, lab re-
ports, and related items dating from the period of inven-
tion, all of which remarked on the advance in flame mon-
itoring safety achieved by the Rowell invention. The ma-
jority of these items, however, were either promotional
literature put out by Scully or press reports cribbed di-
rectly therefrom. The lab reports established only a fact
which is not in dispute: that the Rowell patent was the
first to apply the self-checking circuit to burner flame
monitoring. None of these reports were decisive or even
especially germane to the inventiveness of this application.
As the Supreme Court said recently, in discussing a pa-
tent held simply to arrange ‘‘old elements with each per-
forming the same function it had been known to perform,
although perhaps producing a more striking result than
in previous combinations, ’’
‘Though doubtless a matter of great convenience,
producing a desired result in a cheaper and faster
way, and enjoying commercial success, Dairy Estab-
lishment ‘did not produce a ‘‘new or different func-
tion’. . . within the test of validity of combination
patents’. Anderson’s-Black Rock v. Pavement Co.,
supra at 60. These desirable benefits ‘without inven-
tion will not make patentability’. Great A. & P. Tea
Co. v. Supermarket Corp., 340 U.S., at 153. See Dann
v. Johnston, ante, at 230 n.4.”’
Sakraida v. AG PRO, Inc., 425 U.S. 273, 282-83 (1976).
The foregoing authority, and the cases it cites, also
dispose of Scully’s argument that the district court was
duty bound to treat the fact of issuance of the patent as
itself conclusive of non-obviousness. While weight must
be given to the presumption of validity, and this circuit is
quite prepared to sustain patents which meet the statu-
tory criteria, the time has long since gone, if it ever existed,
when district courts and courts of appeal could refuse
ee
A-15
to make an independent assessment of § 103 obviousness
in light of all the evidence presented. To criticize a court
for making an independent assessment is to criticize it
for doing what the law presently requires. The process
involves the ever-present risk of an overuse of hindsight,
as well as the possibility of blunders by lay judges; but
this court has no license, even if it wanted one, to adopt
another approach. Finding nothing even marginally er-
roneous in the analysis employed by the district court, we
sustain the finding of invalidity.
Fraud
Turning to the cross-appeal by ECA, it must be deter-
mined whether the district court violated the mandate of
Federal Rule of Civil Procedure 15(b) to amend the plead-
ings to conform to issues tried with the express or implied
consent of the parties. Having determined that the Dowling
patents did not anticipate Rowell ’214 and would not have
affected the prosecution of the patent in light of closer
prior art that was cited, the court refused to consider
whether Seully nonetheless violated its duty of candor
and good faith by not disclosing the two patents. The
court noted that further evidence would be necessary to
resolve the issue, and that the failure of the record to
contain sufficient evidence to try the issue was due en-
tirely to ECA’s own misconduct. The court found that
ECA had known of the two Dowling patents at least since
1972, although its counsel were not told of their existence
until midway through the trial. In addition, ECA in its
post-trial briefing on the issue had attempted to mislead
the court as to the extent of an inventor’s duty of dis-
closure at the time the Rowell patent was prosecuted. These
factors all persuaded the court to deny the motion to
amend.
Although Rule 15(b) by its terms requires amendment of
the pleadings whenever an issue has been tried by express
A-16
or implied consent, courts have refused to grant such mo-
tions if amendment would prejudice one of the parties,
such as by requiring the presentation of additional evi-
dence. See American Hot. Rod Association, Inc. v. Carrier,
500 F.2d 1269, 1277-78 (4th Cir. 1974); United States v.
An Article of Drug, 20 F.2d 564 (3rd Cir.), cert. denied,
375 U.S. 953 (1963) ; 3 Moore’s Federal Practice 15.13[2],
at 997 & n. 34 (2d ed. 1974). Professor Moore explains this
practice as an implied finding that the issue involved was
not tried by the consent of the parties. Id. Whether the
district court’s ruling be interpreted either as finding the
issue had not in fact been tried, or that Scully had not
consented to trying the issue, the denial of ECA’s motion
to amend did not exceed the court’s discretion. The Dowling
patents were put in evidence primarily to attack the
validity of the Rowell patent, not to prove bad faith on the
part of Scully. As the district court noted, establishing
fraud on the part of Scully would require evidence of state
of mind, see Norton Co. v. Carborundum Co., 530 F.2d
435, 441-42 (1st Cir. 1976), which neither side produced to
sufficient degree. Requiring Scully to introduce new evi-
dence of its intent and actions during the prosecution of
Rowell ‘214, when the failure of the case to embrace this
issue can be attributed entirely to ECA’s neglect, would
be sufficiently prejudicial to warrant the action taken
by the district court.
Counsel’s argument
We must comment on the entirely unacceptable tenor of
argument by Scully’s counsel. The right of appeal includes
the right vigorously to challenge the decision of a lower
court and to describe in every proper way its alleged er-
rors. But appellate counsel may not give vent to their
frustrations by undignified or discourteous remarks di-
rected against the person of the deciding judge. Never
A-17
suppressing any fact or proper argument, counsel have a
professional responsibility to refer to the tribunals from
which an appeal is taken, as well as those before which
they appear, with reasonable respect and courtesy. Perhaps
an attorney would have greater leeway if provoked by
some act of judicial misconduct, but clearly there was no
misconduct here — only a decision which counsel believes
to be wrong. The court’s decision manifested care and
diligence. While it might be natural for a layman, embit-
tered by a decision, to lash out at a judge, such conduct
cannot and will not be tolerated from a member of the
bar of this court. We only refrain from taking some action
because of the curious history of this case which, beginning
with defendant’s egregious misconduct, seems to have
spawned an unusual atmosphere that seems unlikely of
repetition. We make it quite clear, however, that counsel’s
personal asides in Scully’s brief raise serious questions
in our mind. See Mass. Sup. Jud. Ct. Rule 3:22; DR 7-106
(c)(4); DR 7-106(c)(6). Should we receive anything ap-
proaching this from counsel in the future, we shall not
hesitate to act.
Affirmed.
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A-20
United States Court of Appeals
For the First Circuit
No. 77-1133.
SCULLY SIGNAL COMPANY,
PLAINTIFF, APPELLANT,
v.
ELECTRONICS CORPORATION OF AMERICA,
DEFENDANT, APPELLEE.
No. 77-1144.
SCULLY SIGNAL COMPANY,
PLAINTIFF, APPELLEE,
v.
ELECTRONICS CORPORATION OF AMERICA,
DEFENDANT, APPELLANT.
JUDGMENT
Entered December 29, 1977
This cause came on to be heard on appeals from the
United States District Court for the District of Massachu-
setts, and was argued by counsel.
Upon consideration whereof, It is now here ordered,
adjudged and decreed as follows: The judgment of the Dis-
trict Court is affirmed. No costs on appeal.
By the Court:
/s/ Dana H. Gauiup
Clerk
A-21
United States Court of Appeals
For the First Circuit
No. 77-1133.
SCULLY SIGNAL COMPANY,
PLAINTIFF, APPELLANT,
v.
ELECTRONICS CORPORATION OF AMERICA,
DEFENDANT, APPELLEE.
Before Corrin, Chief Judge,
Lay,* Circuit Judge and
CaMPBELL, Circuit Judge.
ORDER OF COURT
Ewterep January 18, 1978
Failing to raise any issues that have not already been
fully considered by this court, the petition for reconsid-
eration and/or rehearing is denied.
By the Court:
/s/ Dana H. Gativup
Clerk.
*Of the Eighth Circuit, sitting by designation.
A-22
Supreme Court of the iluiicd Siates
No. A-787
ELECTRONICS CORPORATION OF AMERICA,
PETITIONER,
v.
SCULLY SIGNAL COMPANY.
ORDER EXTENDING TIME TO FILE PETITION
FOR WRIT OF CERTIORARI
Upon Consmeration of the application of counsel for
petitioner,
Ir Is Onverep that the time for filing a petition for writ
of certiorari in the above-entitled cause be, and the same
is hereby, extended to and including April 18, 1978.
/s/ Wru1aM J. Brennan, JR.
Associate Justice of the
Supreme Court of the
United States
Dated this 17th day of March, 1978.
A-23
Unrtep States District Court
District or MassacHUSETTS
Civil Action No. 68-881-F
SCULLY SIGNAL COMPANY,
PLAINTIFF,
v.
ELECTRONICS CORPORATION OF AMERICA,
DEFENDANT.
OPINION
February 7, 1977
Avpricn, Senior Circuit Judge.*
Prelude
This is an action for patent infringement. Plaintiff,
Seully Signal Company, is the owner, by assignment from
an employee, of U.S. Patent No. 2,798,214, W. G. Rowell,
Checking Technique and System, applied for April 23, 1954,
and issued July 2, 1957. Because the inventor, personally,
figures prominently in the case, he will be referred to as
Rowell, and the patent as the patent, or plaintiff’s patent,
or simply, ’214. Defendant, Electronics Corporation of
America, hereafter ECA, which manufactures and markets
the accused device, Fireye UVP-4S Self-Checking Control
System, denies both infringement and validity. Both parties
have filed post-trial motions for special relief concerning
two patents, J.J. Dowling, Thermionic Indicating Means
Responsive to Light Variations, No. 1,561,837, Nov. 17,
1925 (Dowling I), and J.J. Dowling, Thermionic Indicating
Means Responsive to Light Variations, No. 1,631,021, May
*Sitting by designation.
A-24
31, 1937 (Dowling II), which defendant asserted, for the
first time during trial, against the patent. Plaintiff moves
to strike the Dowling patents, and defendant moves to
amend its pleading to allege that plaintiff was guilty of
disabling fraud in not calling them to the attention of the
Patent Office, and for damages. These motions must be
disposed of before reaching the merits, but, regretfully,
in connection therewith, there must be considered at length
a number of unusual occurrences relating to the trial.’
My first contact with the case, it having been given me
as a case of a deceased judge which had not been reached
by his suecessor, occurred in November, 1975, when I con-
ducted a general pretrial and assignment call. This was
attended on behalf of defendant by Mr. Jenney, a patent
attorney well and favorably known to the court. Mr.
Featherston, an attorney also favorably known, but be-
lieved, it develops correctly, to have no patent experience,
was also to appear for defendant, but was unable to be
present. At that day’s bench conference the trial was
assigned to begin at 10:00 A.M., Tuesday, December 30,
1975. Although Mr. Featherston foresaw an engagement
that might not terminate by then, the court stated that it
would be unable to honor the engagements of two counsel,
particularly inasmuch as Mr. Jenney was patent counsel
and it was indicated that the defendant wished Mr. Feather-
ston merely to be present at the trial and ultimately to put
on one witness.
The parties furnished extensive post-trial briefs, hereafter PB
and DB, and responded to a subsequent letter making certain in-
quiries by filing reply briefs, hereafter PRB and DRB. I note
here that the inquiries and suggestions in the court’s letter of
February 18, 1976 were in part answered. That letter is not to be
considered as making any independent findings. Supplemental
briefs, hereafter PSR and DSB, were filed in September. Other
references will be cited as follows: volume and page transcripts,
e.g., [4:16]; columns and lines of patent, e.g., [col. 4:16-20].
fe ee TE ee eM eB ns —™
A-25
On December 29, the court denied a renewal of the pre-
trial motion for a continuance because of Mr. Featherston’s
engagement, which this time was accompanied by an affi-
davit. This again recited that Mr. Featherston was ‘‘lead’”’
counsel, and that defendant wished him to be ‘‘present.’’
In spite of the denial of this motion, the only counsel to
appeal for defendant the next morning was an associate
of Mr. Featherston, who stated that he was there merely
to report that Mr. Metcalf, defendant’s president, had in-
structed Mr. Jenney ‘‘not to appear or go forward without
the presence of the lead trial counsel, Mr. Featherston.’’
[1:2]. My instinctive reaction was to default defendant
forthwith, but, in fairness, I thought that I should make
inquiry, and responded as follows.
‘The Court: Let me ask you this: who is going to
examine the witnesses for and on behalf of the De-
fendant?
Mr. Oberkoetter: When Mr. Featherston is avail-
able, Your Honor, he will do so.
The Court: In other words, patent counsel is not
going to try this case?
Mr. Oberkoetter: I am informed by Mr. Feather-
ston at approximately 9:20 this morning, Your Honor,
that Mr. Featherston is the lead trial counsel and
will be trying the case.
The Court: My experience with patent cases has
been that patent attorneys, except in jury cases, are
the ones who try the case... . You now tell me Mr.
Featherston is going to be the one who examines the
witnesses. On those conditions I will postpone the
case ; but I do not intend—as I said at [the pretrial ]—
to postpone the case so that Mr. Featherston may sit
in.
A-26
Mr. Oberkoetter: I represent to the Court, Your
Honor, that Mr. Featherston indicated to me that he
will be trying the case [although there is the proba-
bility] of Mr. Jenney posing some questions on behalf
of the Defendant Corporation.
The Court: If Mr. Featherston is the principal
examiner of the witnesses, I am content; but it is with
that understanding only that I make this postponement
because I made this point clear some weeks ago.”
{[1:2-4] (Emphasis suppl.)
The court waited until 3:15 P.M. for Mr. Featherston
to complete his engagement. Plaintiff’s case then took two
days, during all of which time Mr. Jenney acted for de-
fendant. Friday afternoon, January 2, Mr. Jenney pro-
ceeded with defendant’s case, Mr. Featherston again taking
no part. On Monday, January 5, Mr. Featherston was ill,
but Mr. Jenney stated he was the one who was to continue
with Friday’s witness, and did so. He finished before the
day’s end, and asked for a continuance so that Mr. Feather-
ston could present ‘‘at least one witness to testify on mat-
ters ... not directly related to the strictly patent aspects
of the case.’’ The court acceded, but with the caution that
the case must finish that week because of previous commit-
ments. It did not so finish, due to circumstances later to
be related. I deal first, however, with Mr. Featherston’s
failure to live up to the representations made on December
30 to obtain the postponement.
Mr. Featherston not having asked a single question of a
witness, on January 8 I commented adversely on this fact,
pointing out to all counsel that I had postponed starting
the case on the express understanding that Mr. Feather-
ston was the one who would principally examine the wit-
nesses. [5:25-26]? I am, literally, astounded by the state-
ment in DRB, filed, of course, long after the parties had
A-27
the full transcript,? as to what defendant now says the
court was told on December 30.
‘*(Defendant’s] instructions to Mr. Featherston
were that he was chief counsel and he was to be present
in court and control defendant’s case. This was what
Mr. Featherston’s associate told the Court December
30 and it was the truth.’’ [DRB 45-46] (Kmphasis
suppl)
Not only was this not what the court was told, but, upon
Mr. Featherston’s appearance after I had waited for him,
I had said,
‘‘The Court: I’m told... by your associate .. .
that you were the one who was going to try the case
... and I said under those circumstances, I will wait
until Mr. Featherston comes, but with the understand-
ing that he will be the principal trial lawyer... .
Mr. Featherston: That is, I think, substantially
correct.
The Court: It better had be.’’ [1:15]
What the court said had better happen, never did happen.
Regretfully, I find it never was intended to happen. It
may be—I have no present knowledge—that Mr. Oberkoet-
ter misunderstood Mr. Featherston and overspoke. This
does not alter the fact that his statement is on the record,
and was called to counsel’s attention. Instead of noting it,
and oblivious to the record, DRB now adds the further
preposterous statement, ‘‘Nor can the delay caused by
Mr. Featherston being tied up in Judge Julian’s court be
laid at defendant’s door.’’ [DRB 45] The drum to which
defendant chooses to march drowns out the sound of every-
thing except its own voice, and even drowns out some of
that.
?The negative in the phrase appearing at line 1 on 5:26,
*‘wouldn’t principally examine’’ is an error of the reporter’s,
as the rest of the page, through line 22, as well as the transcript
elsewhere, makes clear.
3 Defendant in fact had daily transcript.
A-28
Before leaving this subject I remark that if, in fact,
Mr. Oberkoetter misunderstood Mr. Featherston, and all
he was told was to repeat what had been in Mr. Feather-
ston’s affidavit, we have the singular circumstance that on
Monday, December 29 I had denied defendaat’s motion,
leaving standing the order to start the next morning, and
defendant’s response was to instruct counsel to pay no
attention to it.*
The foregoing is only part of defendant’s procedure.
Instead of being prepared to complete the trial that week
as instructed, after the continuance granted at Mr. Jen-
ney’s request because of Mr. Featherston’s illness, defend-
ant proceeded to discharge Mr. Jenney. When court re-
convened on Thursday, January 8, defendant requested a
further, two weeks’ continuance for the purpose of edu-
cating new counsel. [5:31] The asserted cause for this
was as extraordinary as the action: counsel had been con-
ducting the trial ‘‘180 degrees’’ from the way Metcalf,
defendant’s president and chief executive officer, under-
stood it should be tried. [5:18] This circumstance could
not have come, however, as a surprise to Metcalf. Three
weeks before trial he had learned from Mr. Jenney how
Mr. Jenney proposed to present the case. Accordingly, he
informed the court, ‘‘I asked that Mr. Jenney under no
circumstances appear in court for us... .’’ [5:19] There-
after he learned that Mr. Jenney was, nevertheless, present
and trying the case.5 Metcalf testified,
‘*Mr. Metcalf: He just did it. I couldn’t believe it.
*For this there is not only the obvious fact of Mr. Jenney’s
failure to appear, and Mr. Oberkoetter’s statement, but Mr. Jen-
ney’s subsequent confirmation. [5:25] See, also, Mr. Featherston’s
apparent concurrence, ante. [1:15]
5**Mr. Jenney[ ’s] .. . appearance in Court each time was counter
4 aa een orders.’’ Letter to the court from Mr. Metcalf, Jan.
—
A-29
The Court: You are the man in charge. It was up
to you to do something.
Mr. Metcalf: Sir, I was a helpless prisoner.
The Court: Who was imprisoning you?
Mr. Metcalf: All I could do, Your Honor, was to
ask Mr. Jenney not to appear and to ask Mr. Feather-
ston to appear.
The Court: You couldn’t ask Mr. Featherston to
employ Mr. Bronstein or whoever else?
Mr. Metcalf: I thought it was pretty late in the
day.’’ [5:21, 22, 23]
Passing the fact that 1 am told in the one breath that
Mr. Jenney was instructed not to appear, and in the other
that it was too late to change, the fact is that, to Metcalf’s
knowledge (emissaries were constantly in the courtroom)
Mr. Jenney did try the case on a day to day basis. During
the trial he evoked comments from the court which Metcalf
felt to be critical.® It then ceased to be ‘‘pretty late in the
day,’’ and Mr. Jenney was in fact discharged.
My comments were not that I disagreed with the basic
defense, but that I felt Mr. Jenney was overtrying his case.
Experienced counsel know what weight to attach to such
comments. Metcalf would not be the first inexperienced
layman to give them undue importance. Nonetheless, I
cannot excuse his behavior. Either he should have had con-
fidence in his well qualified counsel, or, if his primary
confidence was in himself, he should have truly discharged
counsel when the differences between them became appar-
ent before trial. In attempted justification, he informed the
court,
‘*T feel that the Court’s time was wasted .. . in lis-
tening to the testimony. ... Mr. Jenney has written
6 For this I have not only the inference from Metealf’s conduct,
but DB’s discussion of the subject.
A-30
me a letter... that as far as he is concerned the case
has been concluded by him. Your Honor, with all re-
spect, as far as I am concerned, the case has not been
started.’’ [5:54]
If this is to be taken as contradicting my inference that
Mr. Jenney’s discharge was prompted by my comments
during trial—and I may be mistaken in drawing that in-
ference—the alternative is that Mr. Jenney was discharged
simply for doing what he said he was going to do in the
first place. Nevertheless, this extreme story persuaded me
to allow a further short continuance, which counsel subse-
quently agreed was sufficient.
New patent counsel then offered the two patents, Dowl-
ing I and II, which are the subject of plaintiff’s motion
to strike. Neither of these had been in the 30-day notice,
35 U.S.C. § 282, although defendant had concededly been
aware of the first for many years. I admitted them both,
on plaintiff’s concession that it knew them well,” but I did
not know then the full circumstances of defendant’s learn-
ing of the second. Defendant is wrong in saying that plain-
tiff’s motion to strike, filed at the close of the evidence, is
untimely; I must consider it.®
Defendant contends that it learned of Dowling Il only
on Saturday, January 3 at a conference with Rowell. This
presents a broad issue that I must consider. Plaintiff had
originally employed Rowell, the patent’s inventor, to assist
in trying its case. Rowell had aided in preparing a ‘“bread-
board,’’ or mock-up of the patent, to introduce as an exhibit,
and analytical charts to use in testifying. There had then
been a falling out, after which Rowell, in February, 1972,
approached defendant with a personal offer. According
‘It is not fair to say that plaintiff did not object. _
81 merely Sectnats Gueuieet® attempted suggestion [ DRB 19]
that Mr. Jenney’s not citing Dowling I violated instructions. This
is totally unwarranted. Mr. Jenney is the victim of defendant’s
behavior, not the cause of it.
A-31
to Metcalf, Rowell said, ‘‘I have made a long study of not
only the Rowell patent, but of prior art. If you care to buy
the results of my study to throw light on the facts of this
case, [ am prepared to sell it to you.’’ Metcalf agreed.
[n accepting this offer, or in due course thereafter, he knew
that the study, or at least a substantial part of it, had been
made at plaintiff’s expense, and the circumstances thereof.
He also admittedly knew, from his general experience, of
Rowell’s inventor’s oath, and the covenant of cooperation
that is standard in an inventor’s patent assignment.
Significant other facts relating to Rowell I assume that
Metcalf did not know until they came out during ‘trial.
After having accepted a lump sum settlement for his share
in the future royalties, and leaving plaintiff’s employ,
Rowell wrote plaintiff that he had changed his mind and
had concluded that his patent was invalidated by the Dow]-
ing patent with which he had become fully conversant at the
time he applied for a patent, well before he signed the
inventor’s oath. In the letter to plaintiff announcing this
change of mind Rowell stated that, nonetheless, if plaintiff
would agree to pay him 5% of the gross recovery (by a
later letter raised to 8%), plaintiff could have his ‘‘ser-
vices.’’ Plaintiff produced this letter on cross-examination.
Because it stated that his patent would be ‘‘worthless”’ if
Dowling ‘‘should become known’’ to defendant, I inquired
of Rowell what ‘‘services’’ he proposed. His answer was
that he would absent himself, ‘‘possibly take a trip to Ber-
muda,’’ during the trial. [7:134] It was after learning that
his offer was one that plaintiff felt it could refuse that
Rowell approached defendant.®
® Rowell’s introductory letter to defendant indicated that he
had knowledge of a patent ‘‘that will invalidate’’ 214, and re-
quested $2500 therefor, stating, in justification, that it had ‘cost
me a lot of time and expense to dig this up.’’ (See also, [5:71],
“‘the many, many hours it took to uncover the Dowling patent.’’).
To be blunt, these were total lies. Rowell had not dug up either
A-32
Although defendant is now well aware of this background,
it continues to iaud Rowell throughout its briefs, to the
point of accusing plaintiff, in not calling Rowell to give
his opinion, of being guilty of ‘‘suppression of relevant
and material evidence of invalidity by the patentee .. . fatal
to its ease,’? [DRB 21] ‘‘[evidence that] good faith and
public interest requires .. . be brought to the attention of
the Court... .’’ [DRB 108] It seems unbelievable that
defendant should make such a claim. However, this is the
same defendant who, as late as this reply brief which
charged plaintiff with suppression, described Rowell’s letter
as an ‘‘offer to participate in the lawsuit as witness for
plaintiff,’’ [DRB 5] a benign undertaking, when, instead,
on Rowell’s own admission and the plain intendment of his
letter, it was an offer, for a price, to conceal, and not
testify. Doubtless defendant was unhappy about Rowell’s
cross-examination, but this cannot justify emulating the
inhabitants of Nineveh, who could not discern their right
hand from their left. Jonah 4:11. History does not relate
whether the Ninevites were aware of their disability, but
surely defendant’s counsel should be.
I find that Rowell’s conduct was a breach of his covenant,
as assignor of the patent, to ‘‘do everything possible to aid
the company ... to... enforce proper patent protection.’’
I further find that he had no excuse by way of a good faith
belief that plaintiff was acting improperly in seeking to
enforce the patent. He knew no more then than he did
when he stated the contrary in his inventor’s oath.” How-
Dowling patent. Minneapolis Honeywell Co. had furnished them
during the license negotiations, [7:98] and Rowell, as an employee
of plaintiff, wrote extensive memoranda showing their irrelevancy,
ultimately persuading Honeywell to take the license. Obviously,
Rowell had incurred no ‘‘digging’’ expense, and his only uncomp-
ensated time was that required to reverse his polarity, a condition
I find controlled entirely by the source of the currency.
10] suppose, theoretically, that this oath could have been the
lie. However, at that time Rowell had the significant support of
Honeywell, who, in spite of familiarity with Dowling I and II,
accepted an expensive license.
A-33
ever, I rule that ever since the majority opinion in Scott
Paper Co. v. Marcalus Mfg. Co., 1945, 326 U.S. 249, or at
least since Lear, Inc. v. Adkins, 1969, 395 U.S. 653, the
right to atack the validity of a patent cannot be limited
either by contract or by equitable considerations. But cf.
Wallace Clark & Co. v. Acheson Industries, Inc., 2 Cir.,
1976, 532 F.2d 846, cert. denied, 425 U.S. 976 (consent
judgment of validity is res judicata). In spite of the cove-
nants in his assignment, and of his receipt of advance
royalties, Rowell was legally free to attack the patent.
Corespondingly, plaintiff has no complaint against defend-
ant because it paid him for information, and I must deny
plaintiff’s motion to strike the Dowling patents.
This brings me to the second preliminary matter, defend-
ant’s post-trial motion to amend its pleading to assert that
plaintiff, by not informing the Patent Office of the Dowling
patents while the application was being processed, was
guilty of fraud. I find, as a result of studying the file
wrapper and the evidence, that plaintiff was guilty of no
legal fraud. Indeed, defendant, in one of its briefs, appar-
ently disclaims such. [DRB 91] Whatever may be the
value of the Dowling patents, I do not find either antici-
patory." 35 U.S.C. § 102. I deny the motion, also, with
respect to equitable fraud, but this is a more complex
matter, for which I have a number of reasons.
4 As will be seen, I do not read plaintiff’s patent as broadly
as some of its language might seem to warrant. Since the Dowling
patents clearly do not anticipate ’214 as narrowed, I do not con-
sider the question of possible legal fraud in not citing them in
relation to the broader reading. See Norton Co. v. Carborundum Co.,
Ist Cir., 1976, 530 F.2d 435, 441. Even as to the broad reading, the
concept of precise simulation of the event, although I ultimately
reject it as not inventive, see post, might suffice to distinguish the
Dowling patents and ’214 for purposes of legal fraud. In any event,
given that plaintiff did in fact [discuss with] the Patent Office
numerous patents far more relevant than Dowling, to either a
broad or narrow reading, I cannot imagine that citing Dowling
would have affected the Patent Office proceedings.
A-34
The first is laches. I find, from certain testimony, and
the inference apparent from Rowell’s two February, 1972
letters to defendant, see, e.g., [7 :144-46], that he furnished
defendant at that time with both Dowling patents. Where
Rowell was being paid $2500 simply to produce prior art,
I do not accept the ‘‘recollection’’ of defendant’s witnesses
that his second letter, purporting to enclose a second, this
time a feedback, patent, merely contained an unidentifiable
single sheet. I do find that Messrs. Jenney and Featherston
were given only Dowling I; apparently defendant misplaced
the second patent. But even if losing the patent is to be
thought non-negligent, defendant’s failure to have someone
interview its important witness, Rowell, until the middle of
trial, cannot be so regarded. I was told in November that
Rowell would testify. The consequences of not preparing
him must fall on defendant, not on plaintiff.
Secondly, equitable fraud involves a state of mind, see,
e.g., Norton Co. v. Carborundum Co., 1 Cir., 1976, 530 F.2d
435; Shanklin Corp. v. Springfield Photo Mount Co., D.
Mass., 1975, 387 F.Supp. 345, 350, aff’d, 521 F.2d 609, cert.
denied, 424 U.S. 914, as to which defendant bears a heavy
burden, United States v. American Bell Tel. Co., 1897, 167
U.S. 224, 251. In spite of defendant’s contention otherwise,
the case has not been fully tried on this issue. There are
questions that I, myself, would have liked to ask, had that
issue been pleaded before trial instead of afterwards.
Finally, I consider defendant’s own affirmative conduct.
When defendant was speaking of claiming fraud on the
Patent Office I said I thought that in the 1950’s the express
duty of disclosure to section 102, anticipation, and the ex-
tent of a duty to volunteer merely possibly relevant prior
art was less defined than at present. In its post-trial memo-
randum in support of its motion to amend, defendant
asserts that this is a ‘‘mistaken view of the law,’ and cites
two cases which, it says, ‘‘resoundingly rejected’’ the con-
ona
A-35
tention that a ‘‘broadened duty’’ of disclosure was reached
‘‘only during the mid-1960’s.’’ I regret to note that these
eases are totally miscited. Compare defendant’s ‘‘con-
trary’’ case of Union Carbide Corp. v. Filtrol Corp., C.D.
Cal., 1971, 170 U.S.P.Q. 482, 515, 521 (see particularly the
diseussion of the testimony of a former Commissioner of
Patents), with its case of W. F. Altenpohl, Inc. v. Gaines-
ville Mach. Co., N.D.Ga., 1975, 185 U.S.P.Q. 497, 498. I re-
main of opinion that at that time, for prior art short of
actual anticipation, there was a broad view taken of good
faith, see United States v. Standard Elec. Time Co., D.
Mass., 1957, 155 F.Supp. 949, 952, appeal dismissed, 254
F.2d 598; Admiral Corp. v. Zenith Radio Corp., 10 Cir.,
1961, 296 F.2d 708, 716-17, which would require me, if de-
fendant’s amendment were allowed, to reopen the evidence.
Nothing about defendant’s conduct, or showing, persuades
me to do this. By deliberate disregard of its obligations to
the court by its December 30th conduct, and by its discharge
of patent counsel in the middle of the trial and incommod-
ing the court for reasons that existed, to defendant’s knowl-
edge, well before trial, defendant has exhausted my discre-
tion. Cf. Louis C. Forteza e Hijos, Inc. v. Mills, 1 Cir.,
1976, 534 F.2d 415. Consequently, even if plaintiff were
guilty of equitable fraud, the issue is not open, and I assume
the contrary.
The Operation of the Patent.
For many years there have been manufactured devices
that monitor the flame of oil- and gas-fired burners, an im-
portant product because of the dangers attendant upon
accidental extinction, notably, if the supplying of fuel con-
tinues and the burner re-ignites. A monitoring device, on
failure of the burner, activates a warning signal, or a means
to shut off the fuel, etc., hereafter, simply, signals. How-
ever, it is, of course, possible for the monitor itself to
fail. Hence the optimum monitoring device is one that checks
A-36
itself. Though a self-checker gives the same warning if the
device fails as it does for the occurrence of the event it is
monitoring, obviously it is better to have too many signals
than to have none. The total field for such, so-called fail-
safe, devices extends beyond burners, and encompasses
such matters as monitors for the water level in a tank, the
presence of a railroad train in a block of track, and the
presence of an intruder in a designated area. In patent
language the particular subject to be monitored is called
the ‘‘predetermined event’’, hereafter event.
A basic concept of the plaintiff’s patent is that the event
itself is artificially simulated, so that there is an actual,
exact, stimulus cast upon the detector, and hence the self-
monitoring will include the detector’s functioning. Thus,
when used to note the predetermined unsafe level of liquid
in a tank, the float is physically depressed to correspond
with that level. If the device is used to denote the presence
of a train in the surveyed section of the track, an electrical
bridge is made between the rails corresponding to the short
that would be created by the train. And where, to come
to the case at bar, the device is intended to note the cessa-
tion of a flame, an artificial barrier, or shield, activated
by a solenoid,” is interposed between the flame and the
photo-electric cell, hereinafter sensor, that detects the
flame’s presence and cessation. This is done frequently, but
briefly, viz., the supervised flame is, vis-a-vis the sensor,
occulted, or, as described in this case, modulated, producing
a corresponding response, to ‘‘exercise’’ the system.
Once the artificially produced event has occurred and
caused a response from the sensor, although it is impor-
tant that the fact it has taken place be checked, as to which,
see post, it is of course, important that it should not evoke
the signal. This is accomplished by having the example,
122A solenoid is an electric magnet which, when charged, will
eause something, such as a soft iron load that it surrounds, to move.
A-37
providing that there will be no signal unless there is an
event which persists for a period longer than one produced
by artificial simulation. In plaintiff’s device the signal is
prevented from occurring as long as a final delayed action
relay remains sufficiently charged. This relay is continually
being energized during the intervals that the sensor detects
the flame. When the sensor is not registering the flame, this
particular charging ceases. Left alone, the relay would de-
energize and ‘‘decay’’, and, when fully decayed, ‘‘drop out”’
and release the signal. The decaying, however, of this load
relay is slow, and if the event was artificially produced, and
hence deliberately short-lived, the resumption of energizing
resulting from reactivating the sensor rebuilds the charge
before the relay has sufficiently de-energized to drop out.
The following diagram,
APPENDIX ‘‘A”’
Switehing (D)
Relay
(B)
Interrupter
Warning (1H)
Device
Load Relay,(G)
Slow Release
Power (F)
Supply
(E)
ge
Capacitor
Stora
Detector (C)
Light
Burner (A)
A-38
‘8
©
)
)
1
+ ; ae
ce faa)
a
f° tt
Bi aan
oe
—
\c °
ne @
A-39
represents plaintiff’s patent, in a burner monitor embod-
iment.
A solenoid (1), operated by a timer (2), periodically
causes a shield (3) to interrupt the light emitted from the
burner flame (4) to a photocell (5). An optional amplifier
(6)** amplifies the current produced when the light strikes
the photocell to a level sufficient to operate a switching
relay (D). When current is flowing through the relay coil
(7), the relay arm (8) is pulled up into contact with con-
tact(9). In this position, a power supply B+ B—, is con-
nected through a resistor (12) to a capacitor (11), causing
the capacitor to ‘‘charge’’, or store up electrical energy.
When the shield (3) blocks off the light to the photocell (5),
current does not flow to relay coil (7) and arm (8) drops,
making contact with contact (10). In this position, the elec-
trical energy previously stored in capacitor (11) flows to
the coil (14) of the load relay (G) with its associated cap-
acitor (13). Relay arm (15) is drawn into contact with
contact (16). The timer then causes the shield to drop down
again, light falls on the photocell, and the cycle begins
again. In this position, when capacitor (11) is charging,
the load relay (G) is no longer receiving current from the
13 The patent does not show a burner monitor application, but
it does state that other uses may be made in addition to those illu-
strated. Such an application would be obvious to anyone minimally
skilled in the art, as, indeed, is demonstrated by the fact that the
diagram above was adapted by the court from figure 4 of the pa-
tent, one of its less complicated embodiments. Plaintiff, in spite
of having an able and informed expert, Wisnia, gave me virtually
no assistance in understanding the patent’s circuit, but essentially
limited his direct examination to a kindergarten demonstration of a
breadboard assembly to show the patent in terms of result. Accord-
ingly, I am indebted to Mr. Jenny’s diagram, graphic as it was
[ Def. Exh. B], and his cross-examination of Wisnia [3 :39-56], for
aid in working out the circuit, which otherwise I would have to
have done by myself.
14 Professor Frazier, on pressing by the court, conceded that the
amplifier was incidental to the invention, evoking one of the com-
ments which Metcalf may have felt reflected on Mr. Jenney [3 :109]
A-40
storage capacitor (11). However, by having a capacitor (13)
connected across the relay coil (14), the load relay (G@) is
made a ‘‘slow release”’ relay; that is, even after the cur-
rent is cut off to coil (14) and capacitor (13), the relay arm
(15) does not immediately drop down, but is held up against
contact (16) for a brief period until the relay ‘*decays’”’
and the arm drops. The values of the components, and the
timer, are adjusted such that before the load relay (G) de-
cays, switching relay arm (8) will have switched position
and the charge from capacitor (11) will again flow to the
load relay (G). Figure (18) represents the warning de-
vices, e.g., bells, lights, and/or a system to cut off fuel to
the burner. The warning signal is given only if arm (15)
drops down to contact (17); so long as arm (15) and con-
tact (16) are touching no signal is given.
In sum, the load relay receives pulses of electricity from
the storage capacitor as the light interrupter causes the
switching relay to switch back and forth, and the load re-
lay’s delay feature keeps it from dropping out so long as
the pulses continue to be received. If the flame goes out,
arm (8) will remain permanently in contact with contact
(9), the load relay will decay, and the signal will be given.
Similarly, if any of the components malfunction, e.g., if
there is a short cireuit that delivers current to the switch-
ing relay even when no light is striking the photocell, or if
any part should fail, and current is never delivered, re-
lay arm (8) will remain in one of its positions and the sig-
nal will be given. If anything should happen so that the
relay arm (8) is no longer switching back and forth, or,
more precisely, if pulses are not delivered at the proper
rate to the load relay, the signal will be given.
With this explanation of the patent,” I turn to the ques-
tions of infringement and validity.
15 T have, of course, not limited myself to the language of the
claims in describing the invention disclosed. It is a ‘‘settled prin-
ciple that claims and specifications are to be read together.’’ Kop-
A-41
Infringement ; in general.
Defendant’s device uses a circuit patented by defendant’s
chief engineer, a witness in this case, E.C. Thomson, Fail-
Safe Control Apparatus, No. 3,288,195, Nov. 29, 1966. There
is a light interrupter, controlled by an external timer, and
a photocell and amplifier, the pulses of which cause a
swithching device to switch back and forth between two
positions. As it does so, energy is alternately supplied to
a capacitance storage system and transferred therefrom to
a load relay. Thus, defendant’s device simulates precisely
the predetermined event to the same extent as plaintiff’s,
alternately energizes and de-energizes the system at the
exact same rate as the shutter, [6:44] and, in general,
follows the language of plaintiff’s claims as spelled out
in the specifications. I accept the testimony of plaintiff’s
expert that defendant’s device falls within the scope of
pers Co. v. Foster Grant Co., 1st Cir., 1968, 396 F.2d 370, 371
citing United States v. Adams, 1966, 383 U.S. 39, 48-49. As the
court said in Laitram Corp. v. Deepsouth Packing Co., 5th Cir.,
1971, 443 F.2d 928, 933 ;
‘A claim may be and frequently is given its true meaning
by reference to the accompanying specifications and drawings
which, while they cannot enlarge it, may give the claim such
limitation and definition as is necessary to make its abstract
words descriptive of a specific device or process.’’
-lecord, Olympic Fastening Systems, Inc. v. Textron, Inc., 6th Cir.,
1974, 504 F.2d 609, cert. denied, 420 U.S. 1004; Ziegler v. Phillips
Petroleum Co., 5th Cir., 1973, 483 F.2d 858, 869, cert. denied, 414
U.S. 1079: Calico Scallopo Corp. v. Willis Bros., Inc., 4th Cir.,
1972, 458 F.2d 390.
In effect, by referring to the specifications, I consider the in-
vention disclosed to be that described in claim 20. Every diagram
and all of the descriptions in the patent are of such devices. If I
read the patent to include the full generality of claim 14, then,
unless the matter of precise simulation of the event, see post, were
found relevant, ’214 would be invalid over various prior patents
such as Werner, Ludwig, and the Dowling patents, as well as the
closer art which I find to invalidate even a narrowed reading of
the patent, see post. Defendant’s defense to infringement based on
the absence of feedback in its device, see post, however, turns on
the incorporated wording of the broader claim 14, and therefore
the limitation of the patent just indicated will not be relevant to
that discussion.
A-42
plaintiff’s patent. [2:90-95]. Indeed, except for their re-
liance, particularly the later ones, on the absence of feed-
back, see post, it is hard to read even defendant’s witnes-
ses as contradicting infringement.
The ECA device uses two capacitors in the storage sys-
tem rather than one as in plaintiff’s patent. Hence, rather
than switching a single storage capacitor back and forth
from the power supply to the slow relay, in Thomson, in
one position of the switching means, one eapacitor (A)
is being charged while the other (B), previously charged,
is connected across the load relay, and in the other posi-
tion capacitor (A) is connected across the load relay and
capacitor (B) is being charged from the power supply.*®
I do not find that this avoids infringement, but agree
with Professor Frazier, who said, in response to a question
I put to him about this difference. ‘‘I would say there isn’t
much of any significance.’’ [4:25]
The significance which defendant seeks to give to the
two capacitor features is that the Thomson circuit obvi-
ates one particular possibility of unsafe failure in plaintiff’s
patent, that of bridging between the contacts of the switch-
ing relay. I find, however, on all the evidence, that this
particular failure is so unlikely that it is to be grouped
with a number of other remote possibilities to which fail-
safe devices are subject without impairing safety as a
practical matter.” I further find that that defendant’s
16 The Thomson circuit accomplishes this by utilizing diodes,
components which allow current to flow only in one direction.
Also, the switching means in the ECA device is a transistor, rather
than a relay, although the Thomson patent shows both types of
switching. Defendant has not argued that, in itself, this difference
in the way that Thomson self-checks defeats plaintiff’s infringe-
ment claim except as to one dependent claim, see post. Accordingly,
I do not pursue this aspect further.
17 In other applications this possibility might be more significant.
Defendant’s (deposed) witness, Pascoe, who was professionally
concerned with failsafe systems for railroad signals, testified that
a danger there is exposure to a heavy surge of electricity, such as
the track being hit by lightning. There was no evidence of such
danger in furnace flame-out monitors.
+ en
A-43
device merely substituted, or more exactly, provided, a dif-
ferent type of a remotely possible failure. [4:93] But
even if I should be mistaken as to this, to the extent that
two capacitors may have effected an improvement I find
they do not remove defendant’s device from the scope of
plaintiff’s patent."
Infringement: Feedback
Defendant’s principal defense to infringement is that
its device uses a nonfeedback system while, defendant
claims, plaintiff’s patent covers only feedback systems. An
explanation is in order. There are two general methods of
operating that part of the device that causes the event to
be simulated, i.e., of short-ci: cuiting the railroad tracks,
or, in this ease, of charging the solenoid that causes the
shield to be interposed between the flame and the sensor.
One method is to have a motor-operated timer, hereafter
external timing, that periodically releases current to the
solenoid. The other is to operate the solenoid by using the
pulsing of the main control circuit itself, a process known
as feedback, that is, the ‘‘device responds as a function
of its own output.’’ [2-98] The diagram of a burner flame
monitor, ante, would be converted into a feedback system
by replacing the timer (2) with an additional set of con-
tacts on the switching relay so that the solenoid is turned
on and off as the switching relay itself switches back and
forth.
“ I merely footnote, because defendant has apparently abandoned
it in its briefing. the position sought to be advanced by defendant’s
first expert, that because there is always de-energizing, the system
is not alternately energizing and de-energizing, as described in
the patent. The fact of continuous de-energizing is well known in
the art, and it would be contrary to a proper understanding to
assert this as contradicting, or as confusing, the plain meaning of
the patent language. I agree with plaintiff in this instance that
the witness was making nonsense out of the patent. See e.g., [4:20-
21]. Nor do I find that in any respect th tent fail
requirements of 35 U.S.C. § 112. " a ae
A-44
Defendant advances two contentions: first, the broad
argument that in its entirety ‘‘[t]he Rowell patent applica-
tion of 1954 was limited by the Patent Office to feedback,”’
[DB-1], and a narrower one that the particular claims in-
volved in this suit were so limited. 1 reject both.
The broader contention is entirely unsupportable on
the face of the patent. At numerous points, external tim-
ing is described as an alternative to the feedback system.
Thus col. 9, lines 64-70 of the patent reads,
‘The system of Fig. 8, moreover, utilizes the type
of feed-back or output-to-input control discussed in
connection with Fig. 1, but, as in the case of any
of the other figures, before and hereinafter discussed,
independent operation of the solenoid 171 from an
external timing device, such as is utilized in Fig. 4,
may, if desired, be employed.’’ (Emphasis suppl.)
See also col. 5:64 — col. 6:5; col. 11:35-36. Despite these
plain words, defendant contends that an examination of
the file of the Patent Office proceedings reveals that the
patent examiner intended to limit the patent to feedback
applications.
To adopt defendant’s argument, that unambiguous lang-
uage in a patent is to be disregarded in favor of dubious
deductions drawn from an analysis of the file history,
would violate universally accepted principles of interpreta-
tion, whether of patents, statutes, or contracts. Although
defendant has had nine months to brief this case, one can
search the many pages of argument in vain to find any
authority for its position. Nor is the inference which de-
fendant seeks to draw from the file wrapper fully sup-
ported. Although it is true that at some points the exam-
iner indicated an interest in the feedback concept, and
that he rejected certain non-feedback claims and accepted
similar feedback claims, at every point he indicated that
other nonfeedback claims appeared allowable. For example,
abi deees edie wnaniel hes
A-45
the examiner indicated that the original claims 12-17 and
27-31 were allowable, yet claims 14-17 and 27 do not appear
to call for feedback, and, indeed, claims 27 and 28 are vir-
tually identical except that claim 28 calls for feedback and
claim 27 does not. The examiner may not have been entirely
consistent, but any such inconsistency falls far short of the
sort of compelling evidence one would expect from some-
one who offers the novel principle of interpretation that
defendant proposes. Even more to the point, although
defendant has filed three extensive briefs, it has offered
no explanation of how the examiner could have intended
to limit the patent to feedback and yet left frequent, un-
ambiguous language in the patent reciting nonfeedback
applications.
Nor, particularly when defendant is so indignant with
respect to plaintiff’s conduct,’ can I overlook defendant’s
own announced position during trial. While its counsel was
going through the file wrapper with its engineer, Cade, I
asked,
‘‘The Court: [Is it] your contention that every
claim in this patent was a feedback?
Mr. Pfund: I don’t think that’s true. I think what
this witness has testified is that it is true with re-
spect to the claims in issue. I think there are claims
in the patent that are not feedback claims.’’ [6:25]
Nonetheless, I am now presented with briefing as herein-
before set out, and with defendant’s request for finding,
No. 18(b), ‘‘The Examiner only allowed claims which
were restricted to the feedback arrangement.’’
It is impossible to understand such conduct. I can only
wish that there could be a self-checker for counsel.
Finally, and this may be thought the ultimate point,
®T note, for the record, defendant’s modest summary, that plain-
tiff’s brief is ‘‘full of errors, misstatements, half-truths and mis-
representations. ’’ [ DRB 57.]
A-46
although I do not need to rely on it, it makes no difference,
so far as invention, vel non, is concerned, whether the
solenoid-operated shutter is timed externally or internally.
Defendant is simply seeking a construction that results in
a windfall. I accept the conclusion (except that I reject his
reading of the patent, a subject on which I find him un-
qualified), of defendant’s witness, vice-president and en-
gineer, Cade, who said,
‘‘There are no particular advantages of one sys-
tem over the other except that a non-feedback system
would not infringe a patent that uses a feedback sys-
tem.’’ [6:36]
If plaintiff had, in terms, limited its patent to feedback,
it might fiud itself so restricted, even though feedback
contributed nothing to the invention. But what defendant
is seeking to do is, by contentions unsupported in fact or
law, to excise extensive, plain language, and create a limi-
tation that plaintiff never made.
I turn to defendant’s separate contention, that the claims
in suit, as opposed to the patent as a whole, are particu-
larly limited by their language to feedback.
The principal independent claim in suit is claim 14.
14. Apparatus for continually checking a detector
and associated system that is to detect the occurrence
of a predetermined event, that comprises means for
subjecting the detector to repetitive simulations of
the occurrence of the said predetermined event, means
for alternately energizing and de-energizing the sys-
tem synchronously with the repetitive simulations,
means for monitoring the alternative energizing and
de-energizing of the system, and means for indicating
the cessation of such alternations. (Emphasis suppl.)
Defendant contends that the provision for synchroniza-
tion compels the conciusion that the apparatus described
in this claim requires feedback, and that it is confirmed
ee ee ee oe hee er 2
A-47
in this conclusion by a reference to claim 15.” The argu-
ment self-destructs. Both parties agree that claim 15, not
in suit does not provide for feedback. I, too, agree. This
is the precise meaning of the emphasized language, ‘‘means
for controlling the repetition of the simulations by the
alternate energizing and de-energizing of the system to
effect synchronization therebetween.’’ The only difference
between claims 14 and 15 is that the former substitutes
for that language, ‘‘means for alternately energizing and
de-energizing the system synchronously with the repetitive
simulations.’’ Presumably, a distinction is intended, and I
find the distinction manifest. Claim 14 does not require the
simulation of the event to be controlled by the alternate
energizing and de-energizing of the system — and hence
is a clear calling for external timing. Indeed, if it were not
for this very distinction, the claims would be unavoidably
redundant. I further find that the distinction is sufficiently
manifest so that anyone minimally skilled in the art would
read claim 14 as not requiring feedback.
Finally, defendant says that ‘‘synchronization’’ cannot,
in fact, he achieved by external timing, so that, necessarily,
feedback is required, even if not so stated. This contention
rejects the principle that a meaning is to be given to words,
even if not the normal meaning, which effectuates the user’s
apparent intent, and the further principle that, presumpt-
ively, two separate provisions, i.e., claims 14 and 15, are
not intended mean the same thing. Concededly, the normal
20 Apparatus for continually checking a detector and associated
system that is to detect the oceurrence of a predetermined event,
that comprises, means for alternately energizing and de-energizing
the system, means for subjecting the detector to repetitive simula-
tions of the occurrence of the said predetermined event, means for
controlling the repetition of the simulations by the alternate en-
ergizing and de-energizing of the system to effect synchromization
therebetween, means for monitoring the alternate energizing and
de-energizing of the system, and means for indicating the cessation
of such alternations. (Emphasis suppl. )
A-48
meaning of synchronization is identity in time. Synchron-
ized watches read identically. Lut the word is not so narrow.
Engines are synchronized by operating at the same rate.
If two men were beating their drums, strictly, synehro-
nized striking wou'd mean that each hit the same number
of times, and at the same time. However, it is not impossible
to interpret the word loosely, as meaning simply striking
the same number of times, and bearing a uniform re-
lationship, one-for -one.
[ turn to the testimony of Thomson. After describing
the ‘‘sequence of events’? involved in the operation of
Dowling I, a nofeedback device, he was asked whether he
would ‘‘consider that this cause and effect [the overall
operation] could be described as synehronous’?’’ His an-
swer was, ‘‘By some definitions. ... I am not sure of the
exact definition of the word, but in that sense, the one
follows the other, yes’’ [6:91-92]. Apparently, as an en-
gineer, Thomson was not offended by a broad interpreta-
tion. Yet, in the face of this, defendant’s counsel maintain
that a meaning must be given to synchronous which in-
terprets the claim as impossible of achieving what, by
giving it a broader definition can be readily effected.* The
law is the other way.
Quite apart from the general presumption that sense is
intended, a study of the specifications discloses that, al-
though not spelled out as exactly as one might wish, this
loose meaning of synchronous is the apparent concept of
the patent. Great attention is given to Fig. 1. Although
Fig. 1 is an illustration of feedback, it is constantly re-
ferred to throughout the patent, not in terms of its timing
method, but of its basic operation. This operation is fully
described without any reference to the total synchronization
21 While, by its requests for rulings, defendant has not abandoned
it, I need not deal with defendant’s unsound attempt, see, ¢.g.,
[3:26] to play with the word ‘‘system.”’
A-49
that the strictest meaning of the word indicates. See, e.g.,
col. 3:6-14; eol. 4:74 — col. 5:5: The fact, of which de-
fendant makes much, that in col. 5:66-70, the patent speaks
of synchronization in connection with a there described
feedback device, does not mean that other devices are ex-
cluded from plaintiff’s intended definition, as the next
sentence of the patent, describing a nonfeedback applica-
tion, makes clear.
Finally, we observe that complete synchronization within
defendant’s strictest meaning cannot be achieved even by
feedback. Defendant’s witness, Cade, was obliged to con-
cede that even with feedback there is a slight lag in the
functioning of the circuit, preventing a total correspond-
ence. [6:39].
On all the evidence, the patent, and the file wrapper,
[ construe the claims in suit as covering external timing.
Indeed, I am so satisfied that defendant’s extensive, com-
plicated attempt to draw inferences from the file history
that make nonsense out of the language of the patent as
finally allowed, is an imposition on the court, that I intend
to deal with the subject when I come to costs.” This dis-
poses of defendant’s defenses to infringement of claims 14,
17, 20, 24, 25, and 26. As to certain other dependent claims,
defendant advances other defenses.
2 In this connection I make a supplementary finding. Defen-
dant’s interpretation of the patent as excluding feedback alto-
gether, in spite of its plain language and the illustrative figures,
and its contention at the trial that claims 14 and 15 equally re-
quired feedback, was not only unwarranted, but grossly so. Al-
though defendant was well aware of plaintiff’s interest in royal-
ties (and did not then know of Dowling II, Ludwig and Werner,
on which, principally, it now bases it ultimate defense of inva-
lidity,) it did not even seek advice of outside patent counsel before
proceeding to manufacture and market its device. Defendant’s
principal officer testified, albeit in another connection, that while
defendant was customarily represented by a prominent Boston
firm, its first contact with that firm, so far as this patent was
concerned, was when it was served with the complaint — at which
time it found that firm disqualified. Whether defendant in good
A-50
Defendant asserts that its device does not infringe claim
18 because that slaim requires that the system be energized
upon the detection of the predetermined event, while the
ECA device is de-energized upon detection. This I do not
consider a sufficient difference to avoid infringement; if,
indeed, there is any difference, a matter which turns on
what one considers the event. Defendant’s argument here
is reminiscent of a more general contention, which I also
reject, that plaintiff’s patent covers devices to detect the
appearance of radiation, not the disappearance of radiation.
The defense to claim 19 is somewhat more substantial,
though I also reject it. Claim 19 requires that the warning
signal be given only if the ‘‘cessation of alternations .. .
has continued for a time greater than the period or periods
of the said alternations,’’ the alternations referred to being
‘‘the alternate energizing and de-energizing of the system’’
of claim 14. In the accused device, the on and off periods
are of different duration, the full on and off cycle taking
six seconds. The warning signal, however, will be given
less than six seconds after the burner goes out. Defendant
argues that this precludes infringement of claim 19. De-
fendant is assuming that the ‘‘period or periods’’ referred
to in the claim is the full on and off cycle; however, the
phrase might well be taken to refer to the duration of the
on or off phases. So read, defendant’s device infringes
claim 19. Although its briefs nowhere mention this possible
interpretation, I can see no other way to explain the testi-
mony of defendant’s witness Thomson, also ignored in its
briefs; who flatly stated that the condition of claim 19 did
apply to his device. [6:111]
I do agree with defendant that claim 21, requiring the
faith believed that it was not infringing is beyond me to say on
this record, but I find that it was at least careless, if it so be-
lieved, an important matter bearing on costs. Cf. Russell Box Co. v.
ott yo Boz Co., 1st Cir., 1953, 203 F.2d 177, 183, cert. denied,
: S8. 821.
A-51
switching means to be ‘‘relay-controlled,’’ is not infringed
by the ECA device, which uses a transistor switch.
Claim 23 requires that the ‘“‘energy storage means,’’
i.e., the capacitor (11) in my diagram of plaintiff’s device,
be switched back and forth from the power supply to the
load. Defeadant contends that in its device the storage
means is permanently connected to the load, and hence the
claim is not infringed. I reject this argument. The oper-
ation of the Thomson two capacitor circuit has already been
outlined. Each of the capacitors serves two functions,
alternatively. Thus, functionally, it is as if there were
four capacitors in two circuits, both of which circuits
conform to the conditions of claim 23.
Claim 31 I do not find infringed, since it calls for a
‘*radiation-producing means”’ in the apparatus to simulate
the predetermined event, and the Thomson burner monitor
does not have such a means, nor, for that matter, would
a plaintiff burner monitor.
In sum, I reject defendant’s principal infringement de-
fense—that the patent employs only feedback—as frivolous,
and I find that claims 14, 17-20, and 22-26 are infringed.
Validity
In attacking validity, defendant first claims that the
patent was anticipated by one or more prior patents This
section 102 defense, however, must be made out by a single
invention. See Columbia Broadcasting Sys. v. Sylvania
Elec. Prod., Inc., 1 Cir., 1969, 415 F.2d 719, cert. denied,
396 U.S. 1061. As will become apparent in my discussion
of ths prior art, I find no such single anticipatory invention.
Accordingly, I pass to the question of section 103 obvious-
ness, viz., whether plaintiff, as a hypothetical individual,
reasonably skilled in the art, and having all knowledge
thereof, did something substantially more than pick, cull,
and assemble to achieve a predictable device. I recognize
that it has been said that a combination patent must achieve
A-52
‘‘an effect greater than the sum of the several effects taken
separately,’ see Anderson’s-Black Rock, Inc. v. Pavement
Salvage Co., 1969, 396 U.S. 57, at 61, but I believe this
language must not be taken too literally. In a sense, by
hindsight, a combination patent will always achieve, strictly,
no more than the sum of the parts. I believe that invention
may lie in perceiving the possibility and making the selec-
tion so as to achieve something not a priori, mechanically,
obvious. See Charvat v. Commissioner of Patents, D.C. Cir.,
1974, 503 F.2d 138; Associated Folding Box Co. v. Levkoff,
1 Cir., 1952, 194 F.2d 252, 257. On this basis I consider
‘*the scope and content of the prior art... [the] differences
between the prior art and the claims at issue . . . and the
level of ordinary skill [in this art].’’ Graham v. John
Deere Co., 1966, 383 U.S. 1, 17.
The question of obviousness divides into two parts:
whether the self-checking circuit of plaintiff’s patent was
more than an obvious improvement over the prior art, and
whether it was obvious to use such a circuit in a flame-out
monitoring device in a manner that achieved precise simu-
lation of the predetermined event that the monitor is to
detect.
The first of these questions is easily answered, for the
simple fact is that the circuit used in plaintiff’s patent is
identical to circuits disclosed in the prior art. Pascoe, an
engineer concerned with the design of circuits for railroad
signalling devices, deposed concerning various circuits em-
ployed over the year to operate signals to indicate the
presence of a train in a section of track. Basically, such
devices operate by putting a current through the rails of a
section of track and connecting a device to the rails in
such a way that the warning light goes on, indicating the
presence of a train, when the device does not receive cur-
rent from the rails because the train has made a short
circuit between the two of them. In order to make such
CTR
A-53
devices ‘‘failsafe,’’* rather than sending a steady current
through the rails, pulses of electricity, or ‘‘code’’ to use
the jargon, are sent, and the device is designed such that
the signal is given if the pulses are not received, either
because a train is present or because something in the
device has gone wrong. Various ‘‘code following”? circuits
have been employed in the past, those of interest here being
what Pascoe called ‘‘canacitor decoders.’’ Pascoe drew a
diagram of such a circuit, which he testified had first been
used in the late 1940’s. The diagram was as follows, re-
drawn somewhat to facilitate comparison, Pascoe Dep.,
Def. Exh. 3, Fig. I,
fe dtl _—
73 At the trial I took the liberty of recounting what, in my
experience, was the simplest self-checking monitor, the European
railroad crossing alarm of the 1920’s. In this device an electric
bell rang continuously at the crossing, ercept when a train was in
the block. A train would short-cireuit the current, causing the
bell to cease. Correspondingly, the bell would stop if there was a
failure of current, a break in the connections, or a defect in the
bell itself. A traveler, not hearing the bell, would know that a
train was in the block or that the signal was defective, and would
be warned to be on the lookout. ‘‘Affiche. Danger si le tam-tam
n’opere pas.’’ It would seem to me that this was a failsafe system.
It would also seem not a satisfying one.
A-54
Inspection reveals this cireuit to be identical to plaintiff ’s
circuit, diagrammed ante. CTR is a relay which receives
the code pulses, analogous to plaintiff’s switching relay
(D), thereby causing a capatitor C to alternately charge
and discharge into a slow release relay TR, analogous to
plaintiff’s load relay (G). The only difference is that in
‘214 the load relay is made slow release by attaching a
capacitor across its coil, while Pascoe’s Fig. 1 uses a
resistor. However, according to the testimony of both
Pascoe and Professor Frazier, this would not matter; a
resistor, a diode, or a capacitor could be used. [Pase. Dep.
28, 36; 3:135-36]
This circuit is recited as prior art in the Dodd patent,
A. E. Dodd, Apparatus for Detecting Recurrent Circuit
Operation, No. 2,659,880, Nov. 17, 1953, and is also used
in C. M. Hines, Cireuit Integrity Indicating System, No.
2,605,334, July 29, 1952. See Def. Exh. G; 468. I find
nothing nonobvious about the circuit of plaintiff’s patent.”
The remaining question is whether the manner in which the
patent applies this self-checking cireuit was obvious.
24Dodd is an improvement on the capacitor decoder cireuit
drawn by Pascoe, and is also used for railroad signals. Essentially,
the improvement is that Dodd eliminates the possibility of unsafe
failure if bridging oceurs across the contacts of the code following
relay CTR. See n.17 ante. ;
25 Defendant also contends that plaintiff’s patent, even if nar-
rowed as I have indicated, is invalidated by Dowling II, in par-
ticular by its much mooted Fig. 8. I am unimpressed by defendant's
witness Thomson’s convoluted attempt on cross-examination to show
how Dowling II anticipates plaintiff’s patent [7 :65-72). This
attempt concluded with his lauding Dowling’s Fig. 8 as ‘‘so
beautiful . . . such utter simplicity,’’ which prompted counsel to
ask :
‘*Question * Why don’t you use it in the ECA equipment,
its so simple and beautiful? s
Answer: Because it isn’t necessarily practical. ; [7:72]
Cf. O’Henry, The Gentle Grafter (1908) (“beautiful and simple
as all truly great swindles are’’). The value of Fig. 8, after much
study, did not persuade Honeywell that it need not take what has
already been mentioned as an expensive license.
A-55
It could not be inventive to adapt the capacitor decoder
circuit from devices such as railroad signals to devices to
monitor the presence or absence of light, as from an oil
burner.” Cuno Eng’r Corp. v. Automatic Devices Corp.,
1941, 314 U.S. 84; Exer-Genie, Inc. v. McDonald, 9 Cir.,
1971, 453 F.2d 132, cert. denied, 405 U.S. 1075; Buffalo-
Springfield Roller Co. v. Galion Iron Works Mfg. Co., 6 Cir.,
1954, 215 F.2d 686, 688. Nor could it be inventive to effect
the pulsing needed to utilize the self-checking circuit by
using a shield or similar light occlusion device to cause
light periodically to strike the detector. Such interrupters,
besides being shown in both Dowling patents, are recited
as prior art in two German patents, Werner, Circuit for
Signal Devices, Germant Patent No. 696,166, published Aug.
15, 1940, and Ludwig, Photoelectric Security Installation,
German Patent No. 898,564, disclosed Oct, 22, 1953, both
of which are devices to detect the presence of an intruder
in a moni‘ored space using an interrupted light beam.?”
Indeed, Fascoe testified that he had used a capacitor de-
coder circuit in connection with a light source, interrupter,
and detector to signal the presence of a train in a section
of track on a steel bridge where the usual system of run-
ning coded pulses through the rails could not be used.
Pascoe’s dates are not too clear, but even without his testi-
mony, I rule as matter of law that it would be obvious
to use a self-checking circuit of the type used in the patent
26 Plaintiff impliedly concedes as much by bringing this suit,
sinee, as previously stated, the patent does not disclose the appli-
cation of the self-checking system to burner flame monitors.
7" Defendant sought to introduce evidence that it had developed
a similar light interrupter intrusion detector prior to plaintiff’s
patent. I stated that I would defer ruling on plaintiff’s objection
that this had not been mentioned in the pretrial notice. Given
that there is some question about the chronology, that I have al-
ready been indulgent towards defendant’s failure to comply with
the notice requirement, and that the evidence would apparently
be merely cumulative, I now sustain plaintiff’s objection.
A-56
in connection with a light interrupter and detector to moni-
tor a light source.
Plaintiff contends, however, that invention is to be found
in the patent’s teaching that the precise predetermined
event which the device is to monitor should be repetitively
simulated to produce the checking pulses. The purpose of
this is fully to exercise the sensor by exposing it to the
precise stimulus it would receive if the monitored event
actually occurred. Plaintiff contends that it was the first
to do this, and that so doing makes possible truly failsafe
operation.
One of the difficulties with plaintiff’s position is deter-
mining just how literally one is to take the notion of
‘‘nrecise simulation.’”? For example, in connection with
the use of the patent for railroad signals, plaintiff con-
tends that precise simulation is achieved only if the code
pulses are produced by periodically creating a short circuit
across the tracks, such as would occur if a train were
present.2® Thus, plaintiff asserts that railroad signal cir-
cuits, such as Dodd, which produce coded pulses by opening
and closing the circuit from a battery to the rails, rather
than short-cireuiting it, do not effect precise simulation.
However, plaintiff was unable, despite vigorous efforts,
to produce any evidence indicating how this makes any
difference. In cross-examination of Pascoe plaintiff con-
jured up a contrived possibility of unsafe failure in Dodd,
but it does not appear that the plaintiff’s device would
avoid this possibility of unsafe failure. As Pascoe testified,
‘‘no matter what circuits you have, if you get proper
grounds and proper shorts at the proper place, you have
had it.’’ An inconsequential modification of an old device,
coupled with a new label, does not amount to patentable
invention. Inventiveness of counsel in describing the device
is not the same as invention in discovering it.
28 As defendant observes, plaintiff does not require that a train
actually be placed on, and removed from, the tracks.
A-57
As applied to a burner flame monitor, plaintiff asserts
that precise simulation is effected by blocking off light
from the flame to the detector. So far as checking the
sensor is concerned, this is true. Defendant responds that
numerous previous devices have employed light interrupt-
ers, Plaintiff parries with the observation that while such
devices did use interrupters, they did not affect a precise
simulation of the events which those devices were de-
signed to monitor. Thus, plaintiff says, the Dowling pa-
tents, which were concerned principaliy with monitoring
variations of light, such as ‘‘detecting haze or fog,’’ do
not simulate a variable event, but, rather, use a periodic
total interruption of the light. Similarly, the intrusion
monitors, such as Werner and Ludwig, do not call for
interposing an object of the sort which might intrude, but
simulate the intrusion by blocking, or deflecting, the light
beam, or turning the light on and off. But even were I
fo agree with plaintiff that these devices do not precisely
simulate the predetermined event, the difference would not
assist it.
Though it may be true that in prior light occlusion de-
vices the montiored event was not the light itself, and thus
blocking the light might be said not to amount to precise
simulation, I hold that it would not be inventive to adapt
a device that occluded a light in order to effect a simulation
of a monitored event which was not the light, so that it
would monitor the light itself. If one thinks of three ele-
ments in a line, a light, an interrupter, e.g., a shield, and
a sensor, it is but an obvions mechanical variance to use
the light to test the presence, vel non, of the shield, or the
shield to test the presence, vel non, of the light. Nor is
plaintiff aided by its pointing out that in devices in the
prior art designed to monitor variations or partial blockage,
interrupting the light did not amount to a full simulation.
When a device is used to monitor another event, here a
A-58
flameout, using means, such as a disc, or shutter, known
in the prior art, to occlude the light, the simulated occlusion
of the flame will, in such instance, ipso facto effect not a
partial simulation, but a total simulation of the precise
event. | find no invention. Even if plaintiff could be thought
to have ‘‘discovered’’ the value of effecting precise simula-
tion, this discovery, under such circumstances, was not
inventive, but merely the recognition of an attribute of an
existing device. Cf. General Elec. Co. v. Jewel Incan-
descent Lamp Co., 1945, 326 U.S. 242, 248-49. I conclude,
accordingly, that ‘‘precise simulation’’ does not save the
patent in suit, and I hold that, at least as adapted to a
nonfeedback burner flame monitor, the patent is invalid.”
Reprise
Costs, Damages, and Attorneys’ Fees
At the time that Mr. Jenney completed defendant’s pres-
entation except for ‘‘at least one witness to testify on
matters ... vot directly related to the strictly patent as-
pects of the case,’’? defendant had introduced the evidence
which, on analysis, | have ultimately found to invalidate the
patent. Thereafter I was innundated with irrelevant mat-
ters and contentions that were frivolous, or worse. Mr.
Jenney is highly competent patent counsel. My occasional
comments about his procedure during trial, of which de-
fendant makes much in its brief, indicating it as criticism,
did not go to the substance of defendant’s basic defenses,
but to what I believed to be excesses and over-inclusion.
It is ironic that defendant should cite such criticism, if
29 For some reason, not discernable to me, defendant has de-
voted much time and effort attempting to show that the feedback
applications of the ’214 patent are invalid. Defendant’s infring-
ing device is conceded by all not to employ feedback, and therefore
this issue is obviously not presented, even for the purpose of remov-
ing the patent as a ‘‘scarecrow in the art,’’ since it has already
expired.
A-59
it should be so labelled, as partial justification for the ad-
ditional case it thereafter put on through its new counsel.
But, far more important, Mr. Jenney had lived with the
case for many years. If, three weeks before trial, Metcalf
had concluded, as he said, that it was the wrong approach,
it was incumbent upon him, then and there, truly to dis-
charge Mr. Jenney and to acquire new counsel at once.
| deeply regret that I was considerate enough to give de-
fendant what was described at the trial as a second bite
at the cherry. But certainly this was not an absolution in
advance for introducing defenses that I can only regard
as grossly unwarranted, let alone following them up with
the most extraordinary briefing in my experience. Defen-
dant’s president expects me to believe that Mr. Jenney’s
every appearance in court was contrary to his express in-
structions. Defendant’s counsel expect me to believe that
when I was told that non-patent counsel was to be principal
trial counsel to examine the witnesses I was meant to
understand that he was to be present essentially only in
a supervisory status. Defendant wants me to find that
although the patent says repeatedly that one may employ
feedback or external timing, the latter is to be read out
because the file wrapper purportedly indicates that this was
the examiner’s intention. I need not go on. It is bromidic to
invoke Alice in Wonderland, but at least that was a good
story, and I may add, it was not compulsory reading.
The imposition on plaintiff’s in-court time, and briefing
time, is obvious. The imposition on the court’s, not only
in-court but out-of-court time, as this opinion must make
equally plain, was substantial. The latter seemed, however,
unavoidable, especially in light of the court of appeals’
preference that district court decide both infringement
and validity.
With this background, defendant’s claim that it should
receive attorneys fees, and, perhaps, antitrust treble dam-
A-60
ages,’ is as uncalled for as some of its other conduct. The
shoe is on the other foot. I turn, accordingly, to the ques-
tion of special relief to the plaintiff.”
By 35 U.S.C. § 285, in ‘‘exceptional’’ patent cases the
court is authorized to award counsel fees to ‘‘the prevailing
party.’’ A perhaps more customary statute of this nature
does not lock to who prevails in the case as a whole, but
considers the question issue by issue. See, e.g., Mass. G.L.
ce. 231, § 6F, as added by Mass. Acts, 1976, Ch. 233; Pan
American World Airways, Inc. v. Ramos, 1st Cir., 1966,
357 F.2d 341 (Puerto Rico statute). In light of federal
recognition of the principle, of which defendant has been
a beneficiary, Electronics Corporation of America v. Re-
public Industries, 1st Cir., 1974, 507 F.2d 409, cert. denied,
421 U.S. 948, that exceptional conduct, generally, permits
the imposition of attorneys’ fees; see F'.D. Rich Co. v.
Industrial Lumber Co., 1974, 417 U.S. 116, 129, and the
court of appeals has applied this on an issue basis; see,
e.g., McEnteggart v. Cataldo, \st Cir., 1971, 451 F.2d 1109,
1112, cert. denied, 408 U.S. 943, I will so regard it here
30 By this time it will surprise no one if I observe that defendant
at one point appears to be presently requesting treble damages,
Defendant’s Proposed Conelusions of Law, No. 15, and at another
point appears to disclaim such a prayer, absent a new trial, Memo-
randum in Support of Defendant’s Motion to Amend, 16.
31] merely footnote the question whether, had defendant's
conduct been beyond reproach, it would be entitled to special re-
lief on the ground that plaintiff’s claim that the patent was valid
was exceptionaly weak. In my opinion, there would be a short
answer to this — the fact that Honeywell, knowing all that it
did, was willing to take a license under which it ultimately paid
some $450,000 in royalties. (Nor do I accept defendant’s unsup-
ported claim that this was for the other licensed patents. Honey-
well’s device reads exactly on ’214.) This is not a case of plaintiff’s
simply seeking to establish invention by commercial success. Honey-
well’s acceptance of a license was a significant opinion, against its
interest. Even though I do not accept it, I would not find plain-
tiff’s assertion of validity so unwarranted as to justify special
relief.
A-61
without determining whether section 285 may be so in-
terpreted.
Maintenance of a meritless position, Russell Box Co. v.
Grant Paper Box Co., n.23, ante; Electronics Corporation
vf America v. Republic Industries, ante, and improper
briefing, Tardif v. Quinn, 1st Cir., 12/16/76, warrant spe-
cial orders on costs. Under all the circumstances, I assess
counsel fees against defendant in the amount of $5,000,
and, in addition, the judgment dismissing the complaint is
to be without costs to defendant. If this result be thought
large on an hourly basis for plaintiff’s counsel’s lost time,
| construe the award of costs or fees as having penalty
aspects. Cf. Tardiff v. Quinn, ante. So viewed, I consider
this result modest.
Judgment will be entered dismissing tht complaint, with
costs taxed in favor of the plaintiff at $5,000.
/3/ Bartey ALpRIcH
US. Cireuit Judge*
*Sitting by designation.
32 Because in a sense, to proceed against defendant for con-
tempt for instructing counsel not to start trial the morning of
December 30, as I stated I intended to do, but which defendant
asked to have await disposition of the substantive case, see
[7 :206], might be thought a duplication, I now will not do so, but
if this award of counsel fees should be vacated on appeal, I shall
institute the contempt proceedings hereafter. (Or, if defendant
wishes, I will proceed forthwith — I do not wish to deprive it of
a speedy trial.)
A-62
Unrrep States Disrricr Court
District or MasSACHUSETTS
Civil Action No. 68-881-F
SCULLY SIGNAL COMPANY,
PLAINTIFF,
v.
ELECTRONICS CORPORATION OF AMERICA,
DEFENDANT.
JUDGMENT
February 8, 1977
Avpricn, Senior Circuit Judge."
After trial and in accordance with the Opinion of the
Court, filed on February 7, 1977, it is
ORDERED :
United States Patent Nw. 2,798,214 is invalid as
adapted to a nonfeedback burner flame monitor;
Claims 14, 17-20 and 22-26 are infringed by Defendant;
Judgment is entered for the Defendant, and Complaint
is Dismissed. -
Counsel Fees are assessed for the Plaintiff against
the Defendant in the amount of $5,000.00. No other
costs.
By the Court,
(s) Hope K. Connzti, Deputy Clerk
(s) Bamgey Aupricn
Senior Circuit Judge*
*Sitting by designation.
-
a
A-63
APPENDIX B
The Constitutional Provision
Arr. 1, sec. 8. The Congress shall have power .. . To pro-
mote the progress of science and useful arts, by securing
for limited times to authors and inventors the exclusive
right to their respective writings and discoveries.
35 U.S.C. §102. Conditions for patentability; novelty and
loss of right to patent
A person shall be entitled to a patent unless—
(a) the invention was known or used by others in this
country, or patented or described in a printed publication
in this or a foreign country, before the invention thereof
by the applicant for patent, or
(b) the invention was patented or described in a
printed publication in this or a foreign country or in public
use or on sale in this country, more than one year prior to
the date of the application for patent in the United States,
or
(c) he has abandoned the invention, or
(d) the invention was first patented or caused to be
patented by the applicant or his legal representatives or
assigns in a foreign country prior to the date of the appli-
cation for patent in this country on an application filed
more than twelve months before the filing of the application
in the United States, or
(e) the invention was described in a patent granted
on an application for patent by another filed in the United
States before the invention thereof by the applicant for
patent, or
(f) he did not himself invent the subject matter
sought to be patented, or
(g) before the applicant’s invention thereof the in-
vention was made in this country by another who had not
abandoned, suppressed, or concealed it. In determining
A-64
priority of invention there shall be considered not only
the respective dates of conception and reduction to practice
of the invention, but also the reasonable diligence of one
who was first to conceive and last to reduce to practice,
from a time prior to conception by the other.
35 U.S.C. $103. Conditions for patentability; non-obvious
subject matter
A patent may not be obtained though the invention is
not identically disclosed or described as set forth in section
102 of this title, if the differences between the subject mat-
ter sought to be patented and the prior art are such that
the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordi-
nary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which
the invention was made.
Rule 15, Federal Rules of Civil Procedure
(b) Amendments to Conform to the Evidence. When
issues not raised by the pleadings are tried by express or
implied consent of the parties, they shall be treated in all
respects as if they had been raised in the pleadings. Such
amendment of the pleadings as may be necessary to cause
them to conform to the evidence and to raise these issues
may be made upon motion of any party at any time, even
after judgment; but failure so to amend does not affect
the result of the trial of these issues. If evidence is objected
to at the trial on the ground that it is not within the issues
made by the pleadings, the court may allow the pleadings
to be amended and shall do so freeiy when the presentation
of the merits of the action will be subserved thereby and
the objecting party fails to satisfy the court that the admis-
sion of such evidence would prejudice him in maintaining
his action or defense upon the merits. The court may grant
a continuance to enable the objecting party to meet such
evidence.
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.