Petition — Electronics Corp. of America v. Scully Signal Co.

Supreme Court, U. $ ~

FILED \

‘}ape_ig i978 |

\

Supreme Court of the United States

Ocroser Term, 1977

Noy q-14 84

SCULLY SIGNAL COMPANY,

PETITIONER,

Vv.

ELECTRONICS CORPORATION OF AMERICA,

RESPONDENT.

PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FIRST CIRCUIT

Rosert H. Rings,

Rives aNnpD Ross,

10 Post Office Square,

Boston, Massachusetts 02109

(617) 482-3289

Netson H. Sapiro,

SHAPIRO AND SHAPIRO,

600 New Hampshire Avenue, N.W.,

Washington, D.C. 20037

(202) 338-5500

Blanchard Press, Inc., Boston, Mass. — Law Printers

TABLE OF CONTENTS

Opinions Below . 1

Jurisdiction |. aie ee Bel SERS ihe oN 9

Questions Presemted .......... . 2-062. ceesse.. 2

Constitutional and Statutory Peovisions Involved . —

Statement of the Case ..................... 3

Reasons for Granting the Writ - Ri, 7

I. The Unconstitutional Deprival of Patentee Liti-

gants of the Same Due Process Afforded Liti-

gants in Other Fields of Law, Where the Federal

Courts Are Not Permitted To Substitute Mere

Supposition for Contrary Technical Facts Es-

tablished by Undisputed Trial Evidence and by

the Expertise of Technical Administrative Agen-

cies, Requires Prompt Supervisory Action by

eh ey Sy ge oon oc gsaeas lie, 7

II. The Conflicting Standard as to ‘‘obviousness’’

and Presumption of Validity Between the Courts

of the First Circuit and This Supreme Court Re-

quires Immediate Resolution... sisi... 9

a EE Ge Ne Oe iS ee 11

Appendices, Appendix A __. ae 2 _.A-1

AppendixB.._.. elt od ieee .... A-22

AppendixC ...__. ae awe cain an pecs ge

TABLE or AUTHORITIES

Cases

Blonder-Tongue Laboratories, Inc. v. University of

Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434; 28

eS Fe . re 8, 10

Federal Power Commission v. Florida a & Light

Co., 404 U.S. 453, 92 S.Ct. 637, 30 L. Ed. 2d 600 __. 8

+

il T ble of Contents

Page

F.T.C. v. Cement Institute, 333 U.S. 683, 68 S.Ct. 793,

92 L. Ed. 1010. &

Graham v. John Deore Co. of Kenees City, 383 U. S. "

86 S. Ct. 684; 15 L. Ed. 2d 545 (1966) . 5, 6, 9, 10

Kleppe v. Sicrra Club, 429 U.S. 390, 410 (1976) | &

Vermont Yankee Nuclear Power Corp. v. Natural Re-

sources Council, Inc., et al., 46 L.W. 4801 (1978) 8

Constitutional Provisions

United States Constitution,

Article I, § 8, el. 8 3

Amendment5..__.. | | 3

Statutes

28 U.S.C. § 1254(1) © | | 2

35 U.S.C.4101 ................. eehees 3

§103 ... 3, 6

§ 282 ... } 3, 6, 10

Miscellaneous

Boretsky, ‘‘Trend in U.S. Technology: A Political

Eeonomist’s View,’’ 63 American Scientist 70 (1975) 10n

Gee, ‘‘Foreign Technology and the United States Econ-

omy,’’ 187 Science 4177 (1975), p. 622 . 10n

PTC Subcommittee Report No. 1464, 84th Cong. ond

Sess., 1956; 51 J. Pat. Office Soc. 292 (1969) 10n

in the

Supreme Court of the United States

Ocroser TERM, 1977

No.

SCULLY SIGNAL COMPANY,

PETITIONER,

Vv.

ELECTRONICS CORPORATION OF AMERICA,

RESPONDENT.

PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FIRST CIRCUIT

To the Honorable, the Chief Justice, and the Associate

Justices of the Supreme Court of the United States:

Scully Signal Company, your petitioner, prays that a

writ of certiorari issue to review the decision of the Uni-

ted States Court of Appeals for the First Circuit entered

in this case on December 29, 1977, rehearing denied Jan-

uary 18, 1978.

2

Opinions Below

The opinion of the United States Court of Appeals for

the First Circuit (App. A, infra, pp. A-1- A. 21) has been

reported at 196 U.S.P.Q. 657. That opinion affirms an

unreported decision of the United States District Court for

the District of Massachusetts (App. B, infra, pp. A-22 -

A-60).

Jurisdiction

The judgment of the Court of Appeals for the First

Circuit was entered on December 29, 1977, rehearixg denied

January 18, 1978, and this Court’s jurisdiction is invoked

under 28 U.S.C. §1254(1).

Questions Presented

1. Does the Constitution permit a federal court to

ignore undisputed facts established at trial, and earlier

in the patent office, as to an indispensible technical ele-

ment of an invention and its patent claim, and thereby de-

prive a patentee of the due process afforded litigants in

other fields of law where federal courts do not and can not

substitute mere supposition for technical facts established

by trial evidence and the expertise of technical administra-

tive agencies?

2. Does the Constitution permit a federal court to re-

vise a patent claim granted by the patent office by effect-

ively cancelling therefrom an express, significant techni-

cal limitation which the court concedes is neither disclosed

nor suggested in the prior art; and then, by finding the

remainder of the claim ‘‘obvious’’, to invalidate the claim?

3

Constitutional and Statutory Provisions Involved

Constitution of The United States.

lifth Amendment :

‘*No person shall .. . be deprived of life, liberty, or

property, without due process of law.’’

Article I, § 8, el. 8:

‘*The Congress shall have power .. . to promote the

Progress of Science and Useful Arts, by securing for

limited Times to ... Inventors the exclusive right to

their ‘Discoveries.’ ’’

Statutes.

35 U.S.C. § 101:

‘*Whoever invents or discovers any new and use-

ful ... manufacture ... or any new improvement

thereof, may obtain a patent therefor.’’

35 U.S.C. $108:

‘*A patent may not be obtained .. . if the differences

between the subject matter 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 ordinary

skill in the e* o which the subject matter pertains.”’

35 U.S.C. § 282:

‘*A patent shall be presumed valid. The burden

of establishing invalidity of a patent shall rest on a

party asserting it.’’

Statement of the Case

This suit involved a patent! that revolutionized the

safety of controls for monitoring the operation of oil

1 Rowell patent 2,798,214, Checking Technique and System.

4

burners and the like by providing a novel self-checking

system combination. In the words of the licensee, Minneap-

olis Honeywell,

‘*for the first time, you can get a completely ‘fail-

safe’ flame safeguard system.’”

The important element controlling the Rowell combina-

tion to effect this ‘‘completely ‘fail-safe’ ’’ result, in the

words of the patent claim(s)* in suit, is

‘*means for subjecting the detector to repetitive stmu-

lations of the occurrence of the said predetermined

event’’

that is to be detected, suc’ as repetitive simulations of

actual burner flame failure.

The District Court found infringement (App. B, p. A-50).

The District Court found (p. A-50) that there was ‘‘no

single anticipatory invention’’ in the prior art, and rejected

the asserted defense ‘‘that the patent was anticipated by

one or more prior patents... section 102...”’

The Court of Appeals, affirming the District Court,

found (App. A, p. A-14).

‘‘a fact which is not in dispute: that the Rowell pa-

tent was the first to apply the self-checking circuit to

burner flame monitoring.’’

2 Plaintiff’s Exhibit 26. Corroborated by Factory Mutual Labora-

tories: ‘‘. .. this cireuit is the only one which has no unsafe failure

possibility -. .’’ (Plaintiff’s Exhibits 13, 15).

3 Claim 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 repeti-

tive simulations of the occurrence of the said predetermined

event, means for alternately energizing and de-energizing the

system synchronously with the repetitive simulations, means for

monitoring the alternate energizing and de-energizing of the sys-

tem, and means for indicating the cessation of such alterations.

5

The Court of Appeals also found (p. A-13) that.

‘*the product was safer than previous devices’’;

and that there was

‘‘ready commercial acceptance of Honeywell’s licensed

device, and . . . enthusiastic trade comment.”’

Though acknowledging ‘‘that the District Court paid

no attention’’ to the above, (p. A-13) the Court of Appeals

sustained the lower court in finding the invention ‘‘obvi-

ous’’. The District Court had made this finding in a highly

unusual manner reflecting none of the tests required by

this Supreme Court.‘

In order to find ‘‘obviousness’’, the District Court, in

effect, had read out of the petitioner’s claim, and thus out

of the patent as granted by the patent office, the very

means that simulated the event-to-be-detected that was at

the heart of the invention and was positively specified in

the claims.

While frankly agreeing that in the prior art relied on

for this ‘‘obviousness”’

‘*. . . these devices do not precisely simulate the pre-

determined event ... might be said mot to amount to

precise simulation’’, (pp. A-55 - A-56),

the District Court, nevertheless, made a technical fact

supposition of its own — entirely unsupported by the

record and directly contrary to the ruling of the patent

office and to the precise language of the patent claim

and patent specification, and contrary, also, to the admis-

*Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17; 86

S. Ct. 684; 15 L.Ed. 2d 545 (1966).

6

sions of both parties to the litigation — that such simula-

tion is allegedly ‘‘inconsequential’’ and of no ‘‘difference’’

(App. B, pp. A-55, A-56). With the simulation of the event

thus eliminated from the patent claim, contrary to the

express provision of §103 requiring consideration of ‘‘the

subject matter as a whole’’, the lower court then found the

rest of the claim ‘‘obvious’’.

This crucial finding (upon which ‘‘obviousness’’ was

predicated) that the precise simulation of the event-to-be-

detected (flame failure) was ‘‘inconsequential’’ and of no

‘‘difference’’ to the court, not only deprived plaintiff of an

undisputed trial record to the contrary, but, also, deprived

plaintiff of the contrary ruling of the technically expert

patent office that such simulation was an absolutely es-

sential technical element of the invention and one that

was positively included in the claimed combination!

Both the District Court and the Court of Appeals addi-

tionally ignored other undisputed facts established at

the trial (and summarized in App. C) that, under the

tests of Graham v. Deere, supra, show clear unobviousness

of the claimed invention; again depriving petitioner of the

proofs established at the trial, and hardly supporting the

statutory requirement (35 U.S.C. (282, supra) that the

burden of establishing invalidity of a patent shall rest on’’

the defendant.

5 Defendant’s statement : ‘‘unique self-checking feature is effee-

ted through the repetitive cycling of a simulated flame failure’’

(Plaintiff’s Exhibit 3E)

Patent Office Ruling: claim 14 ‘‘. . . . repetitive simulations of

the oceurrence of the said predetermined event . . .’’ Also, in its

office action of April 19, 1956, the patent office required that

the claims ‘‘recite the structural relationship between the detect-

ing, sensing means and the simulating means.’’

7

Reasons for Granting the Writ .

|. THe UnconstirutionaL Deprivan Or Parentee Lati-

GANTS Or Tue Same Due Process Arrorpep LiTIGANtTs

tN Orner Fietps Or Law, Wuere Tue Feperat Courts

Are Not Permitrep To SusstitruTE Mere Svupposirion

For Contrary TecunicaL Facts Estastisnep By Un-

DISPUTED TRiaAL [’vipeNce AND By Tue Expertise OF

TECHNICAL ADMINISTRATIVE AGENCIES, Requires Prompt

Supervisory Action By THe Supreme Court.

In their proper role of closely scrutinizing patents, some

federal courts, as in the present case, have overstepped

the bounds of due process and equal protection of the

laws for patentees, as distinguished from all other classes

of litigants.

To petitioner’s knowledge, in no other field of law except

patents, would a federal court be permitted to substitute

for an undisputed trial record of established technical

fact, its own supposition of contrary technical fact; (in

this instance, that though each of plaintiff and defendant®

insists on the record that the simulation of the event-to-be-

detected is an essential technical element of the system to

make it work, the same is ignored as ‘‘inconsequential’’

by the court, thus to invalidate the patent).

In other fields of law, it is elementary that the plaintiff

cannot be constitutionally thusly deprived of the due proc-

ess residing in the trial record.

To petitioner’s knowledge, in no other field of law except

patents, would a federal court be permitted to substitute

for a technical fact found by an expert administrative

agency, its own supposition of contrary technical fact;

(in this instance, that though the patent office insisted

® (see footnote® infra).

8

that the simulations be specifically recited in the patent

claim as an essential technical element of the invention to

make it work, the same is ignored as ‘‘inconsequential’’

by the court, thus to invalidate the patent).

The contrary principle in other fields of law is well-

established, as in Federal Power Commission v. Florida

Power & Light Co., 404 U.S. 453, 92 S.Ct. 637, 30 L. Ed. 600;

Kleppe v. Sierra Club, 429 U.S. 390, 410 (1976) ; F.T7.C. v.

Cement Institute, 333 U.S. 683, 68 S.Ct. 793 92 L. Ed. 1010.

Most recently, this has been re-iterated in Vermont Yank-

ee Nuclear Power Corporation v. Natural Resources De-

fense Council, Inc. et al, 46 L. W. 4801 (1978).

To petitioner’s knowledge, never before has a federal

court been permitted to revise a patent claim granted by

the patent office by deleting a specific means recited there-

in (i.e. repetitive simulation of the event-to-be-detected),

and thereby invalidate the patent on the basis of such a

revised claim that does not even appear in the patent!

This is, of course, contrary to the patent statute giving

solely to the Commissioner of Patents the duty of grant-

ing patents, and represents another unconstitutional usur-

pation of power by the courts.

This deprival of patentees of the same due process and

equal protection of the administration of judicial prin-

ciples afforded other types of litigants, moreover, is con-

trary to the relatively recently asserted policy of this Su-

preme Court as stated in Blonder-Tongue Laboratories,

Inc. v. University of Illinois Foundation, 402 U.S. 313, 331,

335; 91 S. Ct. 1434; 28 L. Ed. 2d 788 (1971) that

‘‘we fully accept congressional judgment to reward

inventors through the patent system . . . patentees are

heavily favored as a class of litigants by the patent

statute.’’

9

II. Tse Conriictinc Stanparp As To ‘‘Obviousness’’

Anp Presumption Or Vauipiry Between Tue Courts

Or THe First Crrcurr Anp Tuts Supreme Covrv

Requires IMMEDIATE RxsoLuTION.

Though this Supreme Court laid down in Graham v.

Deere, supra, the specific findings that are to be made

by the trial court to determine ‘‘obviousness’’ under 4103,

the lower court made none of those specific findings.

The Court of Appeals, while conceding that the lower

court ‘‘paid no attention’’ to aspects thereof, itself ignored

the undisputed record summarized in App. C hereof that

established the very findings required by Graham v. Deere

for unobviousness.

Instead of following the tests of Graham v. Deere, the

courts of the first circuit heve substituted their own tech-

nique of ignoring the most significant element of the pa-

tent claim (simulation of the event), as to which it is ad-

mitted there is neither anticipation nor even suggestion

in any of the prior art, and then postulating the ‘‘obvious-

ness’’ of the remainder of the claim.

The lower courts further departed from Graham v. Deere

and § 103 itself by not considering ‘‘the subject matter as

a whole’’, as distinguished from part only of the claim.

This is at such a variance with the standards established

by this Supreme Court as to warrant immediate correction

before it becomes a mischievous mechanism for improper

patent invalidation.

More than this, it must be remembered that the defen-

dant itself has conceded” that the very ‘‘simulated flame

failure’’ is what actually effects the ‘‘unique self-checking

feature’’.

7 (see footnote’ infra).

10

Thus defendant has not sustained its burden under $282

of ‘‘establishing invalidity’’ on the grounds here-advanced

by the courts that are specifically predicated upon the con-

trary assertion that the simulated flame failure is ‘‘incon-

sequential’’, and thus an element to be ignored!

This again is at wide variance with the presumption of

validity and defendant’s burden established by $282 as

interpreted by this Supreme Court in the Blonder-Tongue

case, supra.

It is imperative, in these critical times when national

survival depends upon re-establishing technological pre-

eminence, and when the American people — including lawy-

ers — need to look to their courts with confidence, that

this Supreme Court promptly and clearly tell the Court

of Appeals for the First Circuit that the above pronounce-

ment ir Blonder-Tongue is not mere lip service, and that the

requirements of Graham v. Deere and the statutes are to

be adhered to. |

The damage, discouragement and demoralization done

by this kind of conduct afforded your petitioner is being

decried in the technological and innovative communities

and is showing up in our national slippage in invention,

technology and the incentive to innovate.®

8‘‘The large number of patents held invalid has an especially

devastating effect upon the independent inventor of small financial

means. Because of the probability that infringement litigation

will result in judgment for the alleged infringer, it encourages a

tendency to ignore the rights of patentees even where the patents

are valid. . . . Investment in inventions in consequence is dis-

couraged since the property value thereof is depreciated.’’? PTC

Subcommittee Report No. 1464, 84th Cong. 2nd Sess, 1956; 51

J. Pat. Office Soe. 292 (1969).

Decline in the rate of growth of technological innovation and

rapid dissemination throughout the world of U.S. technology-

Boretsky, ‘‘Trends in U.S. Technology: A Political Economist’s

View,’’ 63 American Scientist 70 (1975).

Shrinking in U.S. technology-intensive products since 1970 to

the extent of negative trade balance for the first time in this

century-Gee, ‘‘Foreign Technology and the United States Econ-

omy,’’ 187 Science 4177 (1975), p. 622.

11

To preserve and to deserve confidence in our judicial

system, this Court should promptly.intervene.

Conclusion

This Court can make a long overdue contribution to

America by restoring due process of law to patentees and

thus encouraging the innovative community to build Am-

erica to its former role as the world leader in invention

and technology.

A writ of certiorari should issue to review the judgment

of the United States Court of Appeals for the First Circuit.

Respectfully submitted,

Rosert H, Rings,

RinEs aNnD R«vgs,

10 Post Office Square,

Boston, Massachusetts 02109

(617) 482-3289

Netson H. Sapiro,

SHAPIRO AND SHAPIRO,

600 New Hampshire Avenue, N.W.,

Washington, D.C. 20037

(202) 338-5500

A-1

APPENDIX A

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.

APPEALS FROM THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF MASSACHUSETTS

[Hon, Bartry Aupricn, U.S. Circuit Judge]

Before

Corrin, Chief Judge,

Lay, Circuit Judge,**

CAMPBELL, Circuit Judge.

Robert H. Rines, with whorn Rines & Rines was on brief, for

Seully Signal Company.

Charles E. Pfund, with whom Dike, Bronstein, 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.

(Seully), the assignee of the patent and its licensor. Elec-

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

eourt’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.

towell 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

eaused 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 curreni

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-

A+

charged continually by aliernate 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 hy Eloneywell only in that it relied

on an independent timer for the flame-interrupting shuiter

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, Cireuit Integrity Indicating System (Hines); Ger-

man Patent No. 898,564, Ludwig, Photoelectric Security

Installation (Ludwig); German Patent No. 696,166, Wer-

ner, Cireuit 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, Thermionic Indicating Means Respon:ive 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 *s to complete a circuit between B+ and

B-, a battery or other power source, a capacitor C, 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,

as 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.*

2 Such circuits 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 circuit 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 ‘‘wheiier ‘t

was obvious to use such a circuit in a flame-out nemiiering

device in a manner that achieved precise simulativs #f 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 II 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 Seully 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

circuit, completely anticipated Rowell ’214 and would have

resulted 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 HCA

made use during trial, accepted for the sake of argument

that the self-checking circuit in Dowling II was as safe

as that in Rowell ’214 but went on to indicate 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 provinee, such as the credibility of the ex-

perts. The district court’s supported findings on obvi-

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. Scully goes so far,

indeed, as to deny that the record itself contains any 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 provide 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 technology, let alone justice.’’

He goes on to speak sareastically 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 deai 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

point.

5 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 U.S. 57, 61 (1969)

to the effect that a combination patent must achieve ‘‘an effect

greater than the sum of the several effects taken separately’’,

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 d6es 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 occlusion 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

circuit to signal the presence of a trai.

The court then turned to Scully’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.’’ Scully 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),

cért. 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 seif-

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 inelude Spownd 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

(Ist 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

4-13

courts to stay out of matters that they don’t understand.

lis 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 ‘chow 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 poini) 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 Lock 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

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, 320 F.2d 564 (3rd Cir.), cert. denied,

375 U.S. 953 (1963); 3 Moore’s Federal Practice 915.13[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. 7d. 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 Seully. 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-

récted 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.

A-18

(y) seumng

Aeyoy rozrovdeg Supply esBe[oy MOTE eo1aeg

(9) s0;0030q ~(q) Buryoyag (q) edvs01g (dq) womog §=()‘Avjoy peoy (H) Surusey

«WV», XIGNAddV

A-19

APPENDIX ‘‘B”’

c R B-

i. ) te

& 4t—w fe

cre a ----h..

— ea, dh

———, : = me :

—y a Pt

TT

a

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

Enterep 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. Gatiup

Clerk

A-21

United States Court of Appeals

For the First Circuit

No, 77-1133.

SCULLY SIGNAL COMPANY,

PLAINTIFF, APPELLANT,

v.

KLECTRONICS CORPORATION OF AMERICA,

DEFENDANT, APPELLEE.

Before Corrin, Chief Judge.

Lay,* Circuit Judge and

CaMPBELL, Circuit Judge.

ORDER OF COURT

EXnTerED 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/ Dawa H. Gatiup

Clerk.

*Of the Eighth Circuit, sitting by designation.

A-22

APPENDIX B

Unitrep 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

Aupricn, 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-23

31, 1937 (Dowling IT), 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 i:ength

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 successor, 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.

1 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 PSB 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].

A-24

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-25

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-26

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] (Emphasis

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 cf

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-27

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 defendant’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-

eating 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

- aon orders.’’ Letter to the court from Mr. Metcalf, Jan.

A-28

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 I 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

® For this I have not only the inference from Metealf’s conduct,

but DB’s discussion of the subject.

A-29

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 II 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

7 It is not fair to say that plaintiff did not object.

®I merely footnote defendant’s 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-30

to Metealf, 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, I am prepared to sell it to you.’’ Metcalf agreed.

In 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 Dowl-

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.®

® RNowell’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-31

Although defendant is now well aware of this background,

it continues to laud Rowell throughont 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.2° 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.

10T 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-32

ever, I rule that ever since the majority opinion in Scot?

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 maiter, 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.

1 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 [diseuss with] the Patent Office

numerous patents far more relevant t'.an Dowling, to either a

broad or narrow reading, I cannot imagine that citing Dowling

would have affected the Patent Office proceedings.

A-33

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-

A-34

tention that a ‘‘broadened duty’’ of disclosure was reached

‘‘only during the mid-1960’s.’’ I regret to note that these

cases 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

discussion 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, ete., 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-35

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-electrie 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,

oeculted, or, as described in this case, modulated, producing

a corresponding response, to ‘‘cxercise’’ 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

cause something, such as a soft iron load that it surrounds, to move.

A-36

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

heing 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”’

Burner (A) Light (B) Detector (C) Switching (D) Storage (E) Power (F) Load Relay,(G@) Warning (H)

Interrupter Relay Capacitor Supply Slow Release Device

R+

“ 12

Cyr a ee

| ’ . a ] tt

a 4 3 mn oe

—

8

‘ iS '

A-38

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 te 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

13The 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, [ 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 cireuit, 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 Metealf may have felt reflected on Mr. Jenney [3 :109]

A-39

storage capacitor (11). However, by having i. capacitor (13)

connected across the relay coil (14), the load “elay (G) is

made a ‘‘slow release’’ relay; that is, even after the cur-

rent is cut off to coil (14) and capacitor (13), the relaj arm

(15) does not immediately drop down, but is held up again

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, ¢.g., bells, lights, and/or a system to eut 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 circuit 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.

57 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-

Ls aaeiiicaeaililaieieiaeaeall

A-40

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 externai 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.’’

Accord, 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. Wiliis 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 patent:

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 ineorporated wording of the broader claim 14, and therefore

the limitation of the patent just indicated will not be relevant to

that discussion.

A-41

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 plaintif{’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 capacitor (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.”

| 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. ‘‘] 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

16The Thomson cireuit 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 itsel?, 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.

A-42

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-cireuiting the railroad tracks,

or, in this case, 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.

18 T 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 pruper 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 the patent fails to meet the

requirements of 35 U.S.C. § 112.

eee

A-43

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. I 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.’’ (!mphasis 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, sfatutes, 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,

A-44

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.’’

Tt 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,

19 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.]

om ae. PR DOLL Ae

Oe ee ee

A-45

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 find 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 conclusion that the apparatus described

in this claim requires feedback, and that it is confirmed

A-46

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. 1, 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, be 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, 1.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 occurrence 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 oecurrence 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 synchronization

therebetween, means for monitoring the alternate energizing and

de-energizing of the system, and means for indicating the cessation

of such alternations. (Emphasis suppl. )

ee ee ee ee ee ee ee

ee Sout A tbh ae!

A-47

meaning of synchronization is identity in time. Synchron-

ized watches read identically. But the word is not so narrow.

Kingines are synchronized by operating at the same rate.

If two men were beating their drums, strictly, synchro-

nized striking would mean that each hit the same number

of times, and at the same time. However, it is not impossible

(o 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 synchronous’?’’ 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-48

that the strictest meaning of the word indicates. See, e.g.,

col. 3:6-14; col. 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 cireuit, preventing a total correspond-

ence. [6:39].

On all the evidence, the patent, and the file wrapper,

I 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

fine‘ly 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.

22 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 represeuted by a prominent Boston

firm, its first contact with that firm, so far as this patent was

coneerned, was when it was served with the complaint — at which

time it found that firm disqualified. Whether defendant in good

ee Oe ee, eae we wee

— a"

a ee a ae

A-49

Defendant asserts that its device does not infringe claim

18 because that claim 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 aceused 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.

Grant Paper Boz Co., 1st Cir., 1953, 203 F.2d 177, 183, cert. denied,

346 U.S. 821.

A-50

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. Defendant 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 madé 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 the 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-51

‘Can 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 selee-

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. 7

The first of these questions is easily answered, for the

simple fact is that the cireuit used in plaintiff’s patent is

engineer concerned with the design of circuits for railroad

identical to cireuits disclosed in the prior art. Pascoe, an

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

cireuit between the two of them. In order to make such

devices ‘‘failsafe,’’?? rather than sending a steady current

through the rails, pulses of lectricity, or ‘‘code’’ to use

the jargon, are sent, and th 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 ‘‘capacitor 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,

Cc R B-

G=- 4 L—Wv __Sa

cr = | to

= | = GBs

=— | a

| | Lp

23 At the trial I took the liberty of recounting what, in my

experience, was ilie 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 Ahat 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.

Pe ee ee ind tats be

ee

re rr

A-53

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 capacitor 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 cireuit 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 ©, 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 circuit was obvious.

24 Dodd is an improvement on the capacitor decoder circuit

drawn by Pascoe, and is also used for railroad signals. Essentially,

the improvement is that Dodd eliminates the possibility of unsafe

failure if bridging occurs 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 IJ, 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 IT 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 ?

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-54

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.22 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 monitored space using an interrupted light beam.*’

Indeed, Pascoe 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,

since, as previously stated, the patent does not disclose the appli-

eation of the self-checking system to burner flame monitors.

27 Defendant sought to introduce evidence that it had developed

a similar light interrupter intrusion detector prior to piaintiff’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.

te

A-55

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

‘‘precise 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.”* 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-circuiting it, do net 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-56

As applied to a burner flame monitor, plaintiff asserts

that precise simulation is efiected by blocking off light

from the flame to the detector. So far as checking the

sensor is concerned, tliis 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 principally 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

to 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 obvious 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

ee ee eae

wares &

A-57

flameout, using means, such as a disc, or shutter, known

in the prior art, to occlude the light, the simulated occlusion

of the fiame will, in such instance, ipso facto effect not a

partial simulation, but a total simulation of the precise

event. I 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 ... not directly related to the strictly patent as-

yects 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

expired.

ce ””?

scarecrow in the art,’’ since it has already

A-58

it should be so labe:led, as partial justification for the ad-

ditional case it thereaiter 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-

OAL LALO ee

Oe ee ee

ee ee en

A-59

ages,*° is as uncalled for as some of its other conduct. The

shoe is on the other foot. 1 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 look to who prevails in the case as a whole, but

considers the question issue by issue. See, e.g., Mass. G.L.

c, 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, 1st Cir., 1971, 451 F.2d 1109,

1112, cert. denied, 408 U.S. 943, I wi'l so regard it here

3° 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 Conclusions 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.

31T 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-60

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

of 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,

I construe the award of costs or fees as having penalty

aspects. Cf. Tardiff v. Quinn, ante. So viewed, I consider

tais result modest.

Judgment will be entered dismissing tht complaint, with

costs taxed in favor of the plaintiff at $5,000.

/3/ Bartey ALpRICH

U.S. Circuit 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.)

- esto

A-61

: Unitep Srates District Court

District or MASSACHUSETTS

Civil Action No. 68-881-F

SCULLY SIGNAL COMPANY,

PLAINTIFF,

v.

ELECTRONICS CORPORATION OF AMERICA,

| DEFENDANT.

JUDGMENT

February 8, 1977

AupricH, 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 No. 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 Coniplaint

is Dismissed.

Couusel Fees are assessed for the Plaintiff against

the Defendant in the amount of $5,000.00. No other

costs.

By the Court,

(s) Horr K. Connewy, Deputy Clerk

(s) Bamey Aupricu

Senior Circuit Judge*

*Sitting by designation.

A-62

APPENDIX B

The Constitutional Provision

Art. 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

(gz) 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

Oe ee ee ee a

A-63

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 freely 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.

A-64

APPENDIX C

1. Testimony of Mr. Wisnia (commencing 2-25) con-

cerning the problem that had ‘‘long plagued the art’’ in-

cluding efforts of others such as ‘‘duplicating’’ the system

for redundancy (2-29), ‘‘periodic feeding ...of a known

problem and the checking of the answer”’ (2-32) and the

limitations of these techniques in the solution of the prob-

lem.

2. P. E. 2, App. 340, (col. 1, line 23 through col. 2,

line 56; col. 7, line 58 through col. 8, line 52), delineating

the ‘‘large number of attempts... throughout the years...

to find a solution to this problem’’, including (1) ‘‘dupli-

cating’’ the system, (2)‘‘in oil burners and related control

apparatus ... by ... checking relays’’, (3)‘‘feeding .. .

known problem and the checking of the answer’’, (4) ‘‘ap-

plying a reduced voltage or other signal to the system and

checking-for a corresponding reduction in the output’’,

(5) ‘*periodically sending a signal of known characteris-

tics through the system and manually checking the output”’,

(6)‘‘flame-sensing means, an electronic amplifier and a con-

trol relay’’ with ‘‘timing relay’’ to ‘‘shut off the burners”’

if combustion is not established—and the unsafe hazards

of all these prior attempts. The statement, approved by the

Patent Office, is made that with the Rowell technique, ‘‘for

the first time, all these hazards are completely eliminated’’.

3. History of defendant’s own attempts to improve the

safety of their burner controls: (1) P.E. 7, the Fireye FJ-2,

vintage 1954, using a ‘‘safe-start feature’’ and a ‘‘purge

period’’ which reguires ‘‘manually reset’’—all in the inter-

est and concern of providing ‘‘complete flame failure pro-

tection’”’; (2) P.E. 6, the Fireye FP-2, improved version

1This evidence, of course, answers this Court’s inquiry whether

‘the industry’s failure earlier to develop a self-checking system

could as well have been due to lack of interest or appreciation ...’’.

A-65

of August, 1961, incorporating ‘‘a safety checking circuit

that is effective on every start’’, and with the concern thai

‘‘Any (undesired condition... will result in safety lock-

out’’; (3) P.E. 5, the next improvement, Fireye FC-1, 2

and 5, using two photocells and a flame rod to insure detec-

tion; and then, finally, adopting the plaintiff’s invention in

P.E. 3C, conceding that the ‘‘repetitive self-checking

lame Safeguard Control System provides a new order of

reliability in flame failure protection by repeatedly checking

the uverall performance of the flame monitoring system 10

times per minute’’. [it is here important to note that,

despite the attempts to continue to develop safeguards in

the earlier models, none of them was fail-safe, but had

numerous unsafe and undetectable failure conditions dem-

onstrated by Mr. Wisnia (2-47 through ’54) and concurred

in by each of defendant’s chief engineer, Mr. Thomson

(7-37, 39) and defendant’s expert, Professor Frazier (4-94) |.

4. History of the Minneapolis Honeywell develop-

ments, summarized in P.E. 26, contrasting their earlier

attempts at ‘‘safe-start, self-checking circuits’’ of their

monitors of the decades before Rowell, which could be

‘fused in previous flame safeguard systems only during

startup or recycling’’. Now, with Rowell, ‘‘for the first

.time, you can get a completely ‘‘fail-safe’’ flame safeguard

system’’.

5. The Factory Mutual Laboratories Report (P.E. 13,

15) points out that the prior types of burner monitors all

had ‘‘unsafe failure possibilities due to electronic compo-

nent failures generally inherent in combustion safeguard

circuits ...’’, pointing up the lack of solution of the prob-

lem by the prior attempts at its solution. This report points

out that Rowell ‘‘eliminates’’ those unsafe failures and

that the Rowell ‘‘circuit is the only one which has no unsafe

failure possibility ...’’.

A-66

6. P.E. 57 lists many prior patents of others over the

years working with similar techniques, but the record shows

that only the Rowell concept was adopted by this industry.

7. Defendant’s expert, Professor Frazier, agreed that

it was a ‘‘reasonable’’ statement that ‘‘the skilled engi-

neers in this country had been concerned, at least for

several decades prior to the 1950’s, with the safety of

industrial burner monitoring controls and trying to make

them safe’’; and that he had ‘‘no reason for thinking’’ that

‘“‘ECA engineering would deliberately have put on the

market equipment that would fail unsafe if they knew

how to render it safe’’. (4-112, 113).

8. And defendant’s chief engineer, Mr. Thomson, ad-

mitted that despite their attempts at safety, ECA’s models

(in the 1950’s and 60’s) prior to adoption of the Rowell

invention, had unsafe failures which cannot occur in the

curren! ECA self-checking system using the Rowell tech-

nique (7-38, 39).

cr

*s