# Petition — Electronics Corp. of America v. Scully Signal Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385005_0760%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition - **Published:** January 1, 1978 - **Citation:** 436 U.S. 945 ## Text 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 t [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385005_0760%3A1. Public record. Not legal advice.