Amicus Curiae Brief — Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation

TABLE OF CONTENTS.

2) VS AE SEEPS a Se a ee 1

AMICUS CURIAE OF THE FINNEY COM-

‘PANY SUPPORTING THE POSITION OF THE

_ PETITIONER THAT THE ISBELL PATENT IN

Ue _ «sult IS INVALID wenn nn nnn nnn ee ee 5

EEE IC eee RC NE 5

mmaent of the Facts -........_-----___________ 7

Facts Relevant to Question I _.....____________ 7

Facts Relevant to Question II __..____________ 15

lesen ceciendnaehereresenisisndnandcubavensisienasinsdsiandiishas 20

\ aiadnecahnatsthinnanesnioemihneneneindtitencinaneaasn: 20

pesca erection nan tsielminaeicininadpibaie tien 25

SA itespstlceminnnsianas enavcsepantntnstiiasinneentnieidshitnianesi 32

a

TABLE OF AUTHORITIES.

Cases.

Chi K. Dien, Application of, 371 F.2d 886 (CCPA

SIE) ering oncccniommn i

Clinical Products, Limited v. Commissioner of Pat.

ents, 255 F. Supp. 151 (DC, DC, 1966) _____

Cottier, et al. v. Stimson, et al., 20 Fed. 906 (Cir. Ct,

DB. Cit, TERE) ccccccenscwnusnenunncee

Crossley, John, & Sons v. Hogg, 83 Fed. 488 (Cir. Ct,

D. Mass., 1987) ............ mee ensa

Finney Company, The, v. JFD Electronics Corp. and

University of Illinois Foundation, Civil Action

No. 65 C 671, United States District Court for

The Northern District of Illinois, Eastern Divi.

GO | snccucstsntieinniieniecinenitiibliaenintglanen eee

Gulliksen v. Halberg v. Edgerton v. Scott, 75 USPQ

Be CRED encesneicniinandinmininaneidianna

Hamilton Laboratories, Inc. v. Massengill, 111 F.2d

Be III eacstictineresrecicesetnnieniathitiadneenaieanninee 28, 30

Hedman, et al, v. Commissioner of Patents, 253 F.

Supp. 515 (DC, DC, 1966) ~...........__..

I. C. E. Corporation, et al. v. Armco Steel Corpora-

tion, 250 F. Supp. 738 (1966) —~~.----_-___.

Indiana General Corp. v. Lockheed Aircraft Corp.,

ee Te rin

LaMaur, Inc. v. DeMert & Dougherty, Inc., et al.,

265 F. Supp. 961 (DC, N.D. Ill, 1965), affd.

152 USPQ 163 (7th Cir., 1966) ~----------- 23-24

Mandel Bros., Inc. v. Wallace, 335 U.S. 293 (1948)

iiiaiisihepanlininaiiiihiaideaamaa ae 20, 21, 24, 2

Miegel and Verbanc, Application of, 404 F.2d 378

Ce GREED atsunednmens

Application of, 288 F.2d 940 (CCPA, 1961)

cil 21, 22, 23, 24

Pantzer, Application of, 341 F.2d 121 (CCPA, 1965) 22

Tenney, Frank and Knox, In re, 254 F.2d 619 (1958) 29

Toledo Pressed Steel Co. v. Standard Parts, 307 U.S.

350 (1939)

Tomlinson, Application of, 363 F.2d 928 (CCPA,

22, 23

United States v. Adams et al., 383 U.S. 39 (1966) __ 15

Wetzel et al., In re, 39 F.2d 669 (CCPA, 1930) ___ 22

Wilson, Application of, 368 F.2d 269 (CCPA, 1966) 22

Texts.

Robinson, “Patents,” § 326, 327 (1890)

$5 U.S.C. 102 16, 19, 26, 30

$5 U.S.C. 102(b) 5, 7, 25, 31, 32

$5 U.S.C. 103 5, 6, 7, 10, 20, 25, 32

EE

i the Supreme Court of the United States

OCTOBER TERM, 1970.

No. 338.

BLONDER-TONGUE LABORATORIES, INC.,

Defendant and Counter Claimant-Appellant-Petitioner,

vs.

UNIVERSITY OF ILLINOIS FOUNDATION,

Plaintiff and Counterclaim Defendant-Appellee,

and

JFD ELECTRONICS CORPORATION,

Counterclaim-Defendant-Appellee, Respondents.

MOTION FOR LEAVE TO FILE BRIEF

AMICUS CURIAE.

To the Honorable Chief Justice and Associate Justices of

The Supreme Court of The United States:

The Finney Company, a manufacturer of radio and

television antennas in Bedford, Ohio, respectfully moves

for leave to file the annexed brief amicus curiae in support

of a reversal of the decision of the United States Court of

Appeals for the Seventh Circuit and of the decision below

by the United States District Court for the Northern

District of Illinois, Eastern Division, to the extent that

those decisions found the Isbell patent in suit to be valid.

This case is now before the Supreme Court as a re-

sult of its granting of the petition of Blonder-Tongue Lab-

oratories, Inc. (Defendant and Counter-Claimant-Appel-

lant, below) for a writ of certiorari to the United States

Court of Appeals for the Seventh Circuit. When grant-

a

II ee

ing that petition, the Supreme Court also granted a m-

tion of The Finney Company for leave to file a briet

amicus curiae annexed thereto in support of Granting of

the petition.

The Finney Company is the plaintiff in a pending |

declaratory judgment action seeking, inter alia, a judg.

ment that the Isbell patent of the University of Mini,

Foundation (the same Isbell patent involved in the aboye

action) is invalid.‘ That declaratory judgment action j,

but one of several other pending suits involving the ques.

tions of validity and infringement of the Isbell patent:

The further brief amicus curiae of The Finney (Com.

pany, annexed hereto, is addressed in part to the merit

of the particular issue of the litigation which its prior

brief asked the Supreme Court to consider. In addition,

however, the present brief is directed to the merits o

another issue that is critical to the validity or invalidity of

the Isbell patent in suit. It is believed that a ruling m

both of those issues by the Supreme Court would create

a better understanding of the law on those issues and a

more consistent application of that law by the Federal

trial and appellate courts, as well as insure a correct dis.

position in several other pending suits of the ultimate

issue of validity of a patent that has been held valid be.

low after a final decision of the Court of Appeals of the

Eighth Circuit holding the same patent invalid.

Printing, filing, and service of the annexed brief have

been completed as quickly as possible after the appendix

and other record citations therein could be ascertained

1 The Finney Company v. JFD Electronics Corp. and Univer.

sity of IUinois Foundation, Civil Action No. 65 C 671, United

States District Court for the Northern District of Illinois, Eas

ern Division.

2 Petition of Blonder-Tongue Laboratories, Inc., p. 9, note2

from the record as filed by the parties. Advance consent

tp the filing of such a brief having been refused by the

University of Illinois Foundation (one of the Respond-

ents), granting of this motion and consideration of the

annexed brief are earnestly requested.

Respectfully submitted,

Haroitp F. McNenny,

Joun F. PEARNE,

Attorneys for Amicus Curiae,

The Finney Company.

=

a

AMICUS CURIAE OF THE FINNEY COMPANY

SUPPORTING THE POSITION OF THE PETITIONER THAT

THE ISBELL PATENT IN SUIT IS INVALID.

The Finney Company, as amicus curiae, respectfully

supports the position of the Petitioner in this case insofar

as it seeks a reversal of the decisions below on the issue

of validity of the Isbell patent in suit No. 3,210,767 (PX

1, A. 399, R. 122).

The history of this case and the issues involved are

sufficiently set forth in the Petitioner’s brief.

QUESTIONS PRESENTED.

The Finney Company, as amicus curiae, respectfully

requests the Supreme Court to direct its attention to two

important questions of law involved in the decisions be-

low and on which both of the courts below are believed

to have erred in finding the Isbell patent in suit to be

valid. Those two questions are:

Question I: Where logical exploration within

known principles of the art achieves an unpredictable

result, does the necessity of logical experimentation,

in and of itself, negate obviousness under 35 U.S.C.

103?

Question II: Where, more than one year he-

fore the filing date of a patent, the patented inven-

tion was described in a printed publication available

to persons in the art, upon request, in a university

repository maintained and used for that purpose,

does such publication fail to qualify under 35 U.S.C.

102(b) as a bar to the grant of a valid patent be-

cause—

6

a. the university repository may not haye thet

some unspecified definition of a “genuine library”

or

b. the person responsible for the operation ¢

such repository failed to qualify as “truly a librarj.

an,” by some unspecified standard, or

c. despite the availability of the publication ;,

persons in the art for a few days before the critics)

date, there was only a “rather remote Possibility

that a person knowing of the report might haye

asked for it and obtained a copy of it” during such

a short period?

Question I, above, is the fundamental point of diver.

gence of the respective, conflicting decisions of th

Seventh and Eighth Circuit trial and appellate courts

the issue of validity of the Isbell patent. As will be de

veloped in the correspondingly numbered section of the

ensuing ARGUMENT, that question has been dealt with by

the Supreme Court and other courts in numerous de

cisions during the last few decades, generally in a manner

consistent with the decisions of the Eighth Circuit trid

and appellate courts on the Isbell patent but contrary t

the decisions of the Seventh Circuit trial and appellate

courts with which we are here directly concerned. Hovw-

ever, the Supreme Court has not ruled on this question

since enactment of the present patent statute in 1952.

The decisions below not only depart from the law on

this question as applied by prior federal court decisions,

but are believed to depart from the obviousness test of

patentability prescribed by 35 U.S.C. 103. Therefore,

clarification of this aspect of the question of obviousness

under 35 U.S.C. 103 should provide much needed guide

lines for deciding similar questions in the future and,

cularly, in the several still pending suits on the same

ibell patent.

ion II, above, involving the requirements of a

“publication” within the meaning of 35 U.S.C. 102(b),

yas an issue in the trial on the Isbell patent before the

istrict Court of the Eighth Circuit, but was neither ruled

upon by that court nor considered on appeal by the Eighth

Cireuit Court of Appeals in view of their disposition of the

case by a holding that the Isbell patent is invalid for ob-

yiousness under 35 U.S.C. 103. However, this “publica-

tion” question was considered and ruled upon below by

both the trial and appellate courts of the Seventh Circuit,

but ina manner contrary to all known precedent involv-

ing similar facts. This will also be apparent from the cor-

respondingly numbered section of the ensuing ARGUMENT.

Accordingly, a ruling by the Supreme Court on this basic

question of statutory construction is also important for

insuring a proper application of the “publication” bar of

35 U.S.C. 102(b) in the future.

STATEMENT OF THE FACTS.

Facts Relevant to Question L.

As found by the trial courts in this and the related

Eighth Circuit cases (A. 73-75, 103-105), the invention of

the Isbell patent relates to so-called “broadband” radio

and television antennas. The patented antenna consists

of an array of interconnected elements, called “dipoles,”

that progressively decrease in length and spacing from

one end to the other of the array. They are so connected,

each to the next, that the array is unidirectional in op-

eration. The progression of dipole lengths and spacings

follows a so-called “log-periodic formula” (recently de-

veloped by the prior art as discussed below) which re-

8

quires that the length of each successive antenna

and of each successive space between elements hg the

same fraction of the preceding element length or element

spacing, i.e., they all vary by the same fractional mulg.

plier or “scale factor.” Such proportioning of the

of dipoles is alleged in the patent to produce uniform per.

formance “over any desired bandwidth” of broadcast fro.

quencies, i.e., “frequency independent operation.”

A dipole is a conventional, rod-like, antenna element

of the prior art having a central gap that provides termj.

nals or “feed points” for connecting the dipole, or a serie,

of dipoles, to a receiver or transmitter. The tip-totip

length of a dipole determines a narrow range of frequen.

cies for which its response is optimum. It had sometime

been used in the generally equivalent form of an ep.

gated loop, called a “folded dipole.”

Long prior to Isbell’s work, broadband antennas com.

posed of similar arrangements of a number of dipole ele

ments were old for covering moderate bandwidths, for ex.

ample, the television low band (channels 2 to 6) or high

band (channels 7 to 13). The dipoles were spaced apart,

as required by their known interaction effect on on

another, and they varied in lengths so that each would

operate with optimum response at the frequency de

termined by its length to render the array as a whole r-

sponsive to all frequencies in the particular bandwidth to

be covered.

The most pertinent of such prior art, broadband an-

tennas, having dipoles of varying lengths and spacings,

were the antennas of the Katzin patent No. 2,192,532 (DX

3, A. 477, R. 236) and the K.O. antenna (DX 4, A. 481,

R. 236), the latter employing the same scheme for inter-

connecting (i.e. “feeding’”) the dipoles that is disclosed

wal hel by Isbell for obtaining unidirectional opera-

tion of the antenna (A. 61, 107-108). The K.O. antenna

was not considered by the Patent Office.’ Other prior art

arrays of two or more dipoles similarly interconnected for

unidirectional operation are shown in patents No. 1,-

94,189 to Koomans, No. 2,105,569 to White et al., and

No. 2,700,105 to Winegard, none of which was ———

by the Patent Office.

The antenna of the Isbell patent in suit differed

significantly from the multiple dipole antennas of such

prior art only by the proportioning of the dipole lengths

and spacings of the Isbell antenna according to the afore-

mentioned log-periodic formula of the prior art (A. 61,

95). Thus, rather than being a pioneer, as Respondents

have argued, Isbell merely applied a recently developed

prior art formula to a particular class of prior art antennas

for the same purpose that the formula had been previously

employed.

In 1957, only shortly prior to Isbell’s work on the in-

vention of his patent in suit (completed before May 1959

as explained below), DuHamel and the same Isbell, work-

ing at the University of Illinois, published the first dis-

closure of so-called log-periodic antennas having frequency

independent operation (i.e. uniform operation) over theo-

retically unlimited bandwidths. Those antennas were cir-

cularly curved tooth structures cut out of sheet metal.

The lengths and spacings of the teeth varied progressively

by acommon multiplier or “‘scale factor” according to the

so-called log-periodic formula.

Next, early in 1958, DuHamel and Ore published the

results of their further work with log-periodic antenna

1 As indicated by its omission from the list of references at

the end of the Isbell patent (A. 403).

404).

10

structures at Collins Radio Company (DX 6, R, 238):

The “Introduction” of this publication first described the

prior work of DuHamel and Isbell, noting that the new

results to be reported in this publication

that “the equi-complementary condition” originally be.

lieved necessary was “not always necessary,” since sey.

eral antennas to be disclosed deviated severely from tha

condition) They then made the following statement, of

particular significance in this case, regarding the objec.

ye

tives of their work}

“A great number of logarithmically periodic on.

tenna configurations are possible. The investigation

reported in this paper was conducted to study im.

pedance, pattern, and polarization characteristics of

a variety of structures. Another objective of the in.

vestigation was to devise practical forms of this type

of antenna. Since large, circular tooth structure

would be difficult to construct, the possibility of sim.

plifying this basic structure by straightening the teeth

and by making wire approximations of the teeth was

investigated and is reported in the following se.

tions.” (Emphasis added)

This publication (DX 6), only briefly preceding

Isbell’s invention of the patent in suit, was the first dis-

closure of how the log-periodic principle could be ap

plied to the proportioning of practical, wire or rod-type

antennas to obtain varying degrees of frequency inde

pendence over any desired frequency range. It illustrated

and described various forms of log-periodic antennas pro-

gressing in design toward the wire or rod-type antennas

of the prior art.

Finally, a DuHamel and Ore patent No. 3,079,602

2 Published March 31, 1958, more than one year before ls

wae “or date of May 3, 1960, so as to be prior art under 3

S.C. 103.

11

(DX 14, A. 510, R. 283), also standing as prior art herein

‘net the Isbell patent in suit, disclosed the antennas

of the above described publication and additional variants

that still more closely approached (as explained below)

the structure of the prior art, broadband, multiple dipole

antennas mentioned above and the similar structure of the

antennas of the Isbell patent. Nether the DuHamel and

Ore publication nor this DuHamel and Ore patent was

considered in the actual Patent Office prosecution of the

Isbell patent in suit,’ nor was the DuHamel and Ore patent

considered by the Eighth Circuit courts.

The DuHamel and Ore publication (DX 6) showed

a progression of designs of antennas in which upper and

lower, planar structures were respectively inclined up-

wardy and downwardly from a feed point and diverged

by an angle psi (Y). The feed point was the forward end

of the antenna, and the forward end of the antenna

pointed toward the transmitter of a wave or signal to be

received. The angle psi was varied from a disclosed mini-

M4 Gy A.

mum of 7° (table on p. #) to a maximum of 180° (table_

onp.#). The illustrated designs of the angularly disposed,

upper and lower structures progressed from the original,

curved-tooth, sheet metal structures of DuHamel and

Isbell (Figure 1) through a number of similar, straight-

tooth structures (Figures 2, 3, 6, and 8), to various non-

complementary, wire or rod approximations of the sheet

metal structures (Figures 9, 10, 12, and 15).la.ys3-u9/)

The DuHamel and Ore patent disclosed essentially

the same progression of structures. However, it differed

from their prior publication by disclosing (col. 2, lines ,

52-54) that the angle psi may be reduced to 0°%X When the

Sane

*Note 14 of the decision by the trial court in the Eighth

Circuit (A. 112-113) and the list of references at the end of the

Isbell patent.

142, 771.

ASt4

12

angle psi is 0°, the upper and lower structures in

1-7, 13, and 15 of the patent are parallel and

spaced. All of the forms of Figures 1-7, 13, and 15 of the

10-516) patent), when the angle psi is 0°, differ from the Figure?

form of the Isbell patent only in the form of the

as DuHamel confirmed with reference to the antenna of

Figure 5 of the patent (A. 287-288). DuHamel also ep.

firmed that each triangular tooth of the antenna of Figure

5 of the patent would function similarly to the correspond.

ing straight rod tooth of the Isbell patent “in the E plane

or principle plane” of operation of the antennas (A. 239.

293).

Thus, the only difference between the antennas of

Figure 5 of the DuHamel and Ore patent (with the angle

psi at 0° as disclosed) and Figure 2 of the Isbell patent

is that Isbell used a single, straight rod (half of a cop.

ventional dipole) in place of each triangular element 51},

51c, 51d, etc. of DuHamel and Ore. And as DuHaméd

acknowledged, the operation of the two types of elements

is a and thus equivalent.™

In identifying the prior art, the Seventh Circuit

Court of Appeals first referred only to the art before the

Eighth Circuit courts (A. 60) and later mentioned the

DuHamel and Ore patent only in passing (A. 63), as the

trial court below had done (A. 79), apparently not recog.

nizing how closely the antenna of Figure 5 of that patent

approached ‘the antenna of the Isbell patent in both struc-

ture and operation of the active elements.‘

The Courts of Appeals of the Seventh and Eighth

Circuits both recognized in their decisions that the only

significant difference between the antennas of the Isbell

* This important and evident oversight by both of the trial

and appellate courts below reflects seriously on the cogency of

their treatment of the question of obviousness, as explained in

the ensuing ARGUMENT herein.

13

patent and the broadband, multiple dipole, prior art

(such as the K.O. antenna, DX 4, or antennas

of the Katzin patent, DX 3) is that, according to the Isbell

patent, the lengths and spacings of his conventional dipoles

vary according to the prior art log-periodic formula (A.

61, n 8). Both of those appellate courts referred to -

Jasik’s Antenna Engineering handbook{ which explained ~

that the Isbell antenna was merely an adaptation of the

iodic scaling principle to prior art broadband an-

tennas for the purpose of achieving more uniform (i..,

more frequency independe performance over a fre-

quency band (A. 63, 95). W098 .

As both of those appellate courts and the Seventh

Circuit trial court found, the frequency independent

operation of the antenna of the Isbell patent, or any log-

periodic antenna, was unpredictable (App. 62, 78, 96).

However, as both appellate courts indicated by quotations

from the Jasik handbook, whether or not a particular an-

tenna, proportioned according to the log-periodic formula,

would be frequency independent in its operations was

readily determinable “by logical experimental methods”

(App. 62, 9). A402

It is significant to note that the Isbell patent, itself,

and the records of the Seventh and Eighth Circuit cases

contain no assertion or evidence that the antennas of that

patent are any more frequency independent than the simi-

lar prior art antennas of DuHamel and Ore. Thus the

difference between the claims of the Isbell patent and the

closest prior art (such difference being what Isbell actually

patented) produced no new or surprising results.

The trial and appellate courts below both relied upon

testimony of Dr. DuHamel about his initial surprise on

learning of the Isbel) invention (A. 64, 78-79). As quoted

by that Court of Appeals, DuHamel stated that he was

a

{PX 55, A.

14

initially “surprised at the simplicity of the structure” of

the Isbell antennas, adding—

“At first I was somewhat surprised that they worked

but after thinking more about it and thinking back,

then I was not surprised. At first I was surprised thy

it did work.”

The trial court stated, “There can scarcely be more cop.

vincing proof that Isbell’s invention met a ‘long felt by;

unsolved need’ in the antenna industry.” That conclusion,

on its face, is a non-sequitur. Referring to this testimony

at a later point in its decision, the trial court characteriza

DuHamel’s reaction as one of astonishment (App. 179),

which that testimony obviously does not warrant.

Whatever DuHamel’s reaction may have been, there

is no evidence or finding that, despite his academic degree

and distinguished work in sophisticated antenna research,

he (or his co-worker, Ore) had any familiarity with the

common, unsophisticated, skills found in the commercial

television antenna business, or any knowledge of the prior

art K.O. antenna for home television reception, or of the

particular prior art antenna patents’of record in this case,

Accordingly, the record does not support even an inference

that what was initially surprising to DuHamel or what

he may have failed to accomplish while working in his

particular environment, would not have been obvious “to

a person having ordinary skill” in the commercial tele

vision antenna art and having all of the prior art before

him. Toledo Pressed Steel Co. v. Standard Parts, 307 US.

350, 356 (1939).

Respondent, the University of Illinois Foundation,

has made reference to alleged prior efforts and failures

by others to achieve Isbell’s results. However, the record

reveals no failures and only the efforts of Isbell, who

15

quickly found that applying the known log-periodic for-

mula to prior art dipole antennas produced the same re~

previously obtained by DuHamel and Ore.

Respondent has also argued that the art prior to

Isbell led away from Isbell’s patented antenna, citing

United States v. Adams et al., 383 U.S. 39 (1966). How-

ever, there is no evidence or finding to that effect. The

only relevant evidence involves the work of DuHamel and

Ore, which was shown to have proceeded successfully in

the direction of Isbell’s structure, rather than away from

it, and to encourage further work in that direction.

Facts Relevant to Question II.

As found by the District Court below, the Isbell pat-

ent was applied for on May 3, 1960, but the invention of

the patent was described in a publication (DX 8, A. 500,

A. 213) printed at the instance of the University of Illi-

nois and received at the Publications Office of the Electri-

cal Engineering Research Laboratory on April 30, 1959,

more than one year before the application for the Isbell

patent (A. 79-80). The circumstances are summarized

briefly in the decision of the District Court below as fol-

lows (A. 80):

“The evidence which tends to support the defend-

ant’s position on the question of publication is the

testimony of Miss Marjcrie Johnson in the Wine-

gard trial, of record in this case by stipulation.

Miss Johnson, whose formal position with the Uni-

versity of Illinois in 1959 was Technical Editor of the

Electrical Engineering Research Department, was re-

sponsible for distributing Electrical Engineering Lab-

oratory publications, such as the quarter.y reports.

As part of her duties, Miss Johnson also kept copies

of such publications in a ‘library’ of sorts, where, be-

cause there were no supervisory personnel, materials

16

were kept in locked cabinets and were

tained by request from a member of the pub

staff having a key. Miss Johnson testified that the

quarterly report involved here was in the publication;

office on April 30, 1959, and was therefore ‘available

for distribution upon request on that date,’ although

they were not actually distributed to persons on the

distribution list until May 5, 1959.”

The District Court below summarized the effect of Mis

Johnson’s testimony as follows (A. 80):

“If Miss Johnson were truly a librarian and the doc.

ment had been available in a genuine library, even,

very small or a highly specialized library, this cour

would be compelled by the weight of authority to hold

that such availability constituted ‘publication’ within

the meaning of § 102. See, e.g., Hamilton Labon.

tories, Inc. v. Massengill, 111 F.2d 584 (6th Cr

1940).”

In holding that the facts did not constitute “public:

tion” within the meaning of 35 U.S.C. 102, the District

Court stated (A. 80-81):

“However, the court finds the nature of the availability

of the document in this case was not sufficiently ‘pub-

lic’ in nature to constitute the kind of publication in-

tended by the act, at least until the report was dis-

tributed on May 5, 1959. In my view, the document

had merely arrived from the printer and had come

into the possession of the publications office on April

30, 1959, and although there existed the rather re-

mote possibility that a person knowing of the report

might have asked for it and obtained a copy of it on

that date, this kind of availability did not represent

‘publication.’”” (Emphasis added.)

The Court of Appeals apparently also reviewed Miss

Johnson’s testimony and the testimony of her immediate

i]

'

'

|

a ee ce

A ee ne

17

ior, Harold D. Lawler, and first resummarized the

essential facts as follows (A. 56-57):

“Isbell was associated with the Antenna Labo-

ratory of the University of Illinois in performance of

an Air Force contract. Reports were prepared and

distributed from time to time pursuant to the con-

tract. Quarterly Engineering Report No. 2 contained

a description of Isbell’s investigation of a type of

log-periodic antenna, and it is conceded that if this

report was published more than one year before May

3, 1960, the patent was invalid under 35 U.S.C.

§102(b). The printer delivered copies of the report

to the office of Miss Johnson, technical editor of the

Electrical Engineering Research Laboratory, April 30,

1959. Copies were mailed out of Miss Johnson’s office,

pursuant to the Air Force contract, to persons on the

distribution list May 5.”

* *« * * &*

“Tt appears that the Engineering Research Labora-

tory had a ‘library’ or reading room near Miss John-

son’s office. It was unattended, and she had the keys

to the cabinets in which materials were kept.”

The Court of Appeals then continued (A. 57):

“It is unlikely that a copy of the report in question

reached the ‘library’ before May 3. Miss Johnson

testified that a report would normally not be processed

and made available as a library copy for a week or

two after delivery by the printer.”

However, that supplemental finding by the Court of Ap-

peals (in the nature of mere speculation) had reference

only to cataloging and physically placing the publication in

question in the library. It neither contradicted nor modi-

} fied the trial court’s finding that the publication was avail-

able for reference in the Publications Office or “library of

sorts,” on request.

been made clear by Miss Johnson’s further

which the trial court had apparently accepted, as follows

(DX 22, pp. 216-217, R. 289):

by Lawler (A. 329) that—

18

That availability of the publication for reference had

“Q. And you previously indicated that when ma.

terials were delivered from the printer to your

they were available for distribution on the date they

were delivered to your office?

A. Yes.

Q. With the extra copies of this material ths

you had printed, and I specifically refer to

Report No. 2, would it have been available in your

office for distribution upon request on the date it was

delivered in your office?

A. Yes.

Q. If I had come to your office on April 30th, the

date indicated on that requisition document, and re.

quested a copy of Report No. 2, would I have been

likely to have been delivered a copy?

A. Very likely.

Q. Would you say then, Miss Johnson, that

Quarterly Engineering Report No. 2 was available in

your office on April 30th, 1959 to the same extent as

any other publication or report was available in your

office either as a library reference or as an extra copy?

A. To my knowledge, yes.

Q. So that, to this extent, you would not dis-

tinguish the availability of this Report No. 2 from any

other similar report then in your office?

A. No.”

The Court of Appeals also noted (A. 57) testimony

“A. * * * Quarterly reports normally were re-

stricted in their distribution. Distribution had to be

made, first of all, in accordance with the distribution

list which the contractor would supply.” (Emphasis

added.)

19

Here that Court was led into error in suggesting that

ies might not have been made available “to others”

‘os to such formal “distribution” under the contract.

As Miss Johnson had testified, extra copies had been

ordered at University expense “for our own purposes”

(DX 22, p. 198) and were available for distribution “to

others” as soon as received from the printer (DX 22,

p. 198), ie., April 30, 1959. This was clearly what the

trial court found as a fact.

In this connection, Lawler testified further on cross-

examination (A. 332)—

“Q. Who, Mr. Lawler, had more detailed infor-

mation with regard to the availability of and dates of

publication of the Quarterly Reports, Defendant’s Ex-

hibits 7 and 8, you or Miss Marjorie Johnson? (Em-

phasis added. )

A. She would probably have more detailed in-

formation on them, yes.”

In concluding that the document in question was not

a “publication” prior to May 3, 1959, the trial court ex-

plicitly relied on uncertainty of the proof that Miss John-

son was “truly a librarian,” or that the “library” or “read-

ing room” in question was “a genuine library,” or that

there had been more than a “remote” chance of anyone

actually asking for and obtaining a copy of the document

prior to May 3, 1959. As the trial court stated, but for

those particular uncertainties, it would have been “com-

pelled by the weight of authority to hold that such avail-

ability” of the document “constituted ‘publication’ within

the meaning of § 102.” Because of those uncertainties, it

held that “the nature of the availability of the document

in this case was not sufficiently ‘public’ in nature to con-

stitute the kind of publication intended by the act, at least

20

until the report was distributed on May 5, 1959.” (A. 8.

81). The Court of Appeals affirmed (A.57).

That both of those courts erred as a matter of law is

explained and supported in the second section of the en.

suing argument.

ARGUMENT.

Question I.

By the foregoing statement of facts relevant to Que.

tion I, we have sought to crystallize how the conflicting

Seventh and Eighth Circuit decisions on validity of the

Isbell patent diverge primarily on the issue of whether

or not “unpredictability,” in and of itself, can negate “oh.

viousness” as the test of patentability under 35 US¢

103.°

The issue thus presented was decided by the Sy.

preme Court prior to the present patent statute in Ma:

del Bros., Inc. v. Wallace, 335 U.S. 293, 295-296 (1948).

In that case, involving a new use for an old chemical com.

position, it was argued that the prior art would not have

led a skilled chemist to apply the old compound to the

new use, so that the success of the patentee in doing

was “unpredictable by a skilled chemist” and, therefore,

patentable. In ruling otherwise, the Supreme Court stated:

“But we think that the state of the art was plainly

sufficient to demonstrate to any skilled chemist

searching for an anti-corrosive agent that he should

make the simple experiment that was made here. * * *

It is not surprising therefore that after experimenting

5 To the extent that the courts of the Seventh Circuit at-

tached significance to DuHamel’s failure to achieve Isbell’s par-

ticular structure and to his initial surprise that Isbell’s antenna

worked, that, in itself, was error as the Supreme Court has held.

Toledo Pressed Steel Co. v. Standard Parts, supra.

21

with various standard alkalies in an effort to find a

corrosion inhibitor that would not greatly reduce

acidic astringency, the patentees promptly turned to

urea. Their success was immediate.

“As the United States Court of Appeals for the

Second Circuit pointed out when this patent was be-

fore it: ‘* * * skillful experiments in a laboratory, in

cases where the principles of the investigations are

well known, and the achievement of the desired end

requires routine work rather than imagination, do not

involve invention.’ ”

The present patent statute has, since that decision,

ibed the “obviousness” test of patentability in such

situations, and no decision by the Supreme Court appears

to have been rendered on a similar set of facts since that

time. However, other courts have rendered such decisions,

arriving at the same conclusion that patentability is not

imparted to the results of routine investigations merely

because success is unpredictable where the direction such

investigation should take was sufficiently pointed out by

the prior art to make it obvious to try the particular thing

sought to be patented.

In 1961, the Court of Customs and Patent Appeals

considered the question with which we are concerned and

rendered a decision that has since become a landmark

case. Application of Moreton, 288 F.2d 940, 943-944

(CCPA, 1961). Without citing any prior authority, that

court reached the result of the Supreme Court’s decision

in Mandel Bros. v. Wallace, supra. In commenting on the

argument that unpredictability negates obviousness, the

Court of Customs and Patent Appeals stated—

“What this amounts to is an argument that if one

slavishly following the prior art, albeit with a little

educated imagination, will sometimes succeed and

sometimes fail, then he is always entitled to a pat-

22

ent in case of success. This is not the intention be.

hind 35 U.S.C. Sec. 103. Obviousness does not re.

quire absolute predictability. Where, as here th

knowledge of the art clearly suggests a certain clas,

of compounds, materials actually known by the term

‘viscosity improving agents,’ as useful to improve the

viscosity index of a certain group of hydraulic fiyi

lubricants, the mere possibility of failure does not

render their successful use ‘unobvious.’

“Appellant has not shown the production of any.

thing unexpected here.”

Since its decision in Application of Moreton, supm,

the Court of Customs and Patent Appeals has repeatedly

considered the same question and has consistently fo.

lowed and cited that prior decision wherever the prior

art taught a line of routine investigation to be followed

and sufficiently suggested trying the particular thing

sought to be patented to render it obvious to invest.

gate its operability. See, for example, Application of

Pantzer, 341 F.2d 121, 126 (CCPA, 1965); Application of

Wilson, 368 F.2d 269, 271 (CCPA, 1966); Application of

Chi K. Dien, 371 F.2d 886, 887 (CCPA, 1967). See, also,

In re Wietzel et al., 39 F.2d 669, 672 (CCPA, 1930) ren.

dered long prior to the Moreton decision and prior to the

present patent act, reaching the same result on the same

line of reasoning and quoting with approval from the Pat-

ent Office Board of Appeals as follows:

“And, where there is no real reason to suppose that

the result would not be produced there is no inven-

tion in trying it and finding out that the process is

successful.”

In its brief before the Seventh Circuit Court of Ap-

peals, Respondent, the University of Illinois Foundation,

cited Application of Tomlinson, 363 F.2d 928, 931 (CCPA,

1966) in which the Court of Customs and Patent Ap

nt te ate ie Ate |

23

peals refused to apply and drew a distinction from its

earlier decision in the Moreton case. However, the distinc-

tion involved the extent to which the prior art suggested

the line of investigation to be pursued and the particular

kinds of things to be tested. Nothing in the Tomlinson de-

cision indicates that the court questioned the soundness of

the doctrine announced by it in the Moreton decision.

Similarly, the decision by the Court of Customs and

Patent Appeals in Application of Miegel and Verbanc, 404

F.2d 378 (CCPA, 1968) turned on the sufficiency of the

prior art to bring the applicants under the Moreton doc-

trine, the majority holding that Moreton applied and was

controlling. A dissent by Judge Rich disagreed only be-

cause he felt that the results obtained by the applicant

were unexpectedly superior to results obtained by the

prior art (not true in the case of Isbell’s results). From

this and related considerations, he felt that the prior art

teachings would not have led one to try the particular

solution to a new problem for which the applicants were

seeking a patent.

Other courts have applied the reasoning and results

of the Court of Customs and Patent Appeals decisions in

the Moreton and subsequent cases reviewed above. The

District Court for the District of Columbia first did so in

Hedman, et al. v. Commissioner of Patents, 253 F. Supp.

515, 520 (DC, DC, 1966), and shortly thereafter in Clini-

cal Products, Limited v. Commissioner of Patents, 255 F.

Supp. 151, 152 (DC, DC, 1966), drawing the important

distinction between any requirement of absolute predict-

ability and the “paramount rule of ‘reasonably based pre-

dictions,’ ”

The District Court for the Northern District of Illi-

nois, in which the present case originated, faced the same

problem in LaMaur, Inc. v. DeMert & Dougherty, Inc.,

24

et al., 265 F. Supp. 961, 977 (DC, N.D. Ill, 1965), aff'd. 159

USPQ 163 (7th Cir., 1966). Citing both the Supreme

Court decision in Mandel Bros., Inc. v. Wallace, supra,

and the Court of Customs and Patent Appeals decision in,

Application of Moreton, supra, it reached the same

holding that obviousness was not negated by the necessity

for conducting a single and obvious experiment to esta},

lish that a known film-forming compound was compatible

with other ingredients of a patented hair spray and, there.

fore, that it could be used to advantage in the patented

composition.

As is evident from the summary of the prior art in

the foregoing review of the Facts Relevant to Question

I, the DuHamel and Ore article (DX 6) and their pa

ent (DX 14) not only taught the direction of the routing

investigations required to arrive at Isbell’s structure, but

produced a number of successful log-periodic antennas

that carried the investigation almost to that structure, it

self. Their success (not failure) clearly indicated that the

investigation should be continued further in the same di

rection, as by applying the log-periodic formula to the

proportioning of the broadband dipole antennas of the

Katzin patent (DX 3) and of the K.O. antenna (DX 4).

Rather than discouraging such further work in that direc.

tion, the reasonable probability of continued success in

doing so was demonstrated.

As the trial and appellate courts of the Eighth Cir.

cuit held, one skilled in the art having the prior art, broad-

band, dipole antennas before him, along with the prior

art DuHamel and Ore publication, should reasonably have

expected the former to be rendered more frequency inde-

pendent by proportioning the dipole lengths and spacings

according to the log-periodic formula. At the very least,

it should have been obvious to such a person to take that

25

simple step and test the resulting antenna despite the fact

that success WAS not predictable with any certainty. By

the reasoning of Mandel Bros. v. Wallace and of the

other later decisions on the same question under the pres-

ent patent statute, the result of such an obvious further

sep should also be obvious under 35 U.S.C. 103.

With the additional prior art patent to DuHamel and

Ore, teaching that the angle psi in Figure 2, for all of the

milar antennas disclosed, could be reduced to 0°, the

Seventh Circuit courts were shown that DuHamel and Ore

had even more closely approached the precise structure

daimed by Isbell. What little had been left to the imagina-

tion of one skilled in the antenna art was thus further re-

duced by the record before the latter courts. Under the

authority of the cases reviewed above, it is respectfully

submitted that they erred as a matter of law in differing

from the conclusion of the Eighth Circuit Courts, whether

solely or only partly because Isbell’s success was un-

predictable.

Question II.

As is clear from the foregoing summary of the Facts

Relevant to Question II, Quarterly Engineering Report No.

2 (DX 8) described the invention of the Isbell patent so

as to invalidate it under 35 U.S.C. 102(b) if it was pub-

lished before May 3, 1959. Printed copies of the report

were delivered to and available at the Publications Of-

fice of the Electrical Engineering Research Laboratory at

the University of Illinois by April 30, 1959, and were avail-

able on that date, and thereafter in an adjacent “library”

or “reading room,” upon request of either Miss Johnson,

Technical Editor of the Publications Office, who was in

charge, or a member of her staff.

26

As the District Court expressly held (A. 80), it “would

have been compelled by the weight of authority to hold

that such availability constituted ‘publication’ within the

meaning of § 102” if—

a. The Publications Office and adjacent library o

reading room were “a genuine library,” and

b. Miss Johnson had been “truly a librarian”

and

c. There had been more than a “remote pos

sibility” that a person knowing of the report might

have asked for it and obtained a copy of it betwee,

April 30 and May 3, despite its clear availability fo,

that purpose.

The question presented is whether or not, under those cir.

cumstances, the courts of the Seventh Circuit erred as,

matter of law in holding that the report was not a “pub.

lication” within the meaning of § 102 before May 3, 1959,

It is respectfully submitted that the availability of

Quarterly Engineering Report No. 2 more than one year

before the application for the Isbell patent in suit on May

3, 1960, constituted “publication” under the law.

An early decision, Cottier, et al. v. Stimson, et al., 20

Fed. 906 (Cir. Ct., D. Ore., 1884), set forth the Courts

views as to the general requirements for a “publication”

under the patent law. In that decision (p. 910), the Court

said:

“In Walk. Pat. 56, it is said that a ‘printed public-

tion is anything which is printed, and, without any

injunction of secrecy, is distributed to any part of

the public in any country. Indeed, it seems reason

able that no actual distribution need occur, but that

exposure of printed matter for sale is enough to cow

stitute a printed publication.’

27

“But something besides printing is required. The

statute goes upon the theory that the work has been

made accessible to the public, and that the invention

has thereby been given to the public, and is no longer

le by any one. Publication means put into

general circulation or on sale, where the work is ac-

cessible to the public. See Reeves v. Keystone Bridge

Co. 5 Fisher, 467.” (Emphasis added)

In brief, that decision held that a printed work is a

“printed publication” under the law when it is accessible

without an injunction of secrecy to any part of the pub-

lic. This accessibility to the public can occur in a number

of different ways that have been specifically considered

by the courts.

One of the common ways in which a printed work is

made accessible to the public is by placing a copy in a

library. Another early decision, John Crossley & Sons v.

Hogg, 83 Fed. 488 (Cir. Ct., D. Mass., 1897), held that

publication had been established by proof that a single

copy of a book was received in a library and that such

publication was sufficient to bar the grant of a valid pat-

ent.

There has been no requirement that members of the

public actually used the printed copy contained within a

library, apparently on the logical theory that its avail-

ability begins when it is received by the library, and it is

the act and intent of making it available that should be

binding on an inventor and those in privity with him.

Thus, the Patent Office Board of Appeals, in Gulliksen v.

Halberg v. Edgerton v. Scott, 75 USPQ 252, 257 (1937),

held the following in a case involving the deposit of a

thesis in a college library:

“Since both affidavits referred to above clearly

show that the thesis was received September 25, 1929,

it is held that the dates when the same was bound ¢

indexed is of no importance for the thesis becan,

available to the public as soon as received in the i.

brary.” (Emphasis added)

Consistently with such a theory, the Sixth Circuit

Court of Appeals held in Hamilton Laboratories, Ine »

Massengill, 111 F.2d 584, 585 (1940):

“* * * the Weed thesis is in the prior art and mark,

a step in its development since it was put on file ix

the library of the college, available to students ther

and to other libraries having exchange arrangement

with Iowa State. John Crossley and Sons v. Hogg

C.C., 83 Fed. 488, 490; Britton v. White Mig. Co,

C.C., 61 Fed. 93, 95. We think intent that the frix

of research be available to the public is inati

of publication under the statute * * *.” (Emphasis

added.)

Robinson, an early, eminent patent text author’ rn.

lated intent to the act of publication as follows:

“A work of public character is such a book or other

printed document as is intended and employed for

the communication of ideas to persons in general, as

distinguished from particular individuals. Private

communications, although printed, do not come under

this description, whether designed for the use of

single persons or of a few restricted groups of per-

sons.” (§ 326)

* * * * *

“The publication must not only be intended for the

public * * *, [I]t must have been actually published

in such a manner that anyone who chooses may avail

himself of the information it contains. [T]he deposit

of a single copy in a library to which the public have

or can obtain admission places the work within the

reach of all.” (§ 327) 3

6 W. Robinson, “Patents,” § 326, 327 (1890).

29

Recent decisions have followed and further clarified

foregoing statements of the law. For example, the

‘ of the deposit in a library of a single copy of

printed matter and the immateriality of the obscurity of

Cai were commented on by the Court of Customs

and Patent Appeals (while deciding that material on

microfilm is not “printed” within the meaning of the pat-

ent law) in the case of In re Tenney, Frank and Knox,

954 F.2d 619, 624-627 (1958). In that case, the Court ob-

served—

“The essence of all we have quoted is that, in con-

sideration for the patent grant, something must be

given to the public which it did not have before

(albeit that the enjoyment of this ‘something’ may

be postponed for 17 years). If the public is already

possessed of that ‘something,’ or if it is accessible to

the public, there is a failure of consideration and no

patent may be granted.” (Emphasis added.)

Explaining what “accessible to the public” means, the

Court stated further (at 254 F.2d 626-627)—

“But though the law has in mind the probability

of public knowledge of the contents of the publica-

tion, the law does not go further and require that the

probability must have become an actuality. In other

words, once it has been established that the item has

been both printed and published, it is not necessary to

further show that any given number of people ac-

tually saw it or that any specific number of copies

have been circulated. The law sets up a conclusive

presumption to the effect that the public has knowl-

edge of the publication when a single printed copy is

proved to have been so published. See Evans v. Eaton,

1818, 3 Wheat. 454, 514, 4 L.Ed. 433; Curtis, Law of

Patents, pp. 500-03 (4th ed. 1873).” (Emphasis

added.)

7

Bae errs esas

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Ce ee ee ee |

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30

“It is no doubt true that our present law is anomo.

lous, as evidenced by our conclusion that a

is not ‘printed.’ A foreign patent file, laid Open for

public inspection, is not a printed publication because

typewritten, while a printed publication available to

the public only in a Southern Rhodesian libray

would be.”

Still more recently, the District Court for the Sout.

ern District of California held that the filing of a copy of,

thesis in a college library on October 9, 1950, barred,

patent applied for October 30, 1951 (21 days over th

permissible one year). Indiana General Corp. v. Lod.

heed Aircraft Corp., 249 F. Supp. 809, 815, 816 (1966),

In that decision, the Court cited the Hamilton Laboratorie,

v. Massengill case, supra, as an authority “squarely in

point.”

About the same time, the District Court for the South.

ern District of New York (while denying a motion fo

summary judgment because of unresolved questions of fact

in the particular case) reviewed the same and related

questions of law in some detail in I. C. E. Corporation,

et al. v. Armco Steel Corporation, 250 F. Supp. 738, 143

(1966). In doing so, it stated its conclusion that a “ ‘printed

publication’ as contemplated by Congress in 35 USC.

102”—

“can include a document printed, reproduced or dv-

plicated by modern day methods, including micro

filming, upon a satisfactory showing that such docu-

ment has been disseminated or otherwise made avail

able to the extent that persons interested and ordi

narily skilled in the subject matter or art, exercising

reasonable diligence, can locate it and recognize end

comprehend therefrom the essentials of the claimed

invention without need of further research or experi-

mentation.” (Emphasis added.)

The foregoing decisions involving deposit in a library

make several points clear on which there appears to be

no conflict. Only a single copy need be deposited. It is

the date of receipt by the library that determines the date

of publication, not the date when the work was cataloge’:

or put on a reference shelf, since the author has thus put

the work out of his control with the intent that it be avail-

able to the public. It is immaterial how small or obscure

the library may be, so long as it is available to members

of the public who may happen to look for it; and the

chances that anyone may have looked for it there on that

date are immaterial.

As the first of the cited decisions also notes (along

with others unnecessary to cite here) putting the work on

sale is a publication of the work, without regard to the date

of first actual sale.

From all of the cited authorities, a principle is clear:

Publication occurs by the act of exposing the work any-

where that a member of the public, without an injunc-

tion of secrecy indicating a contrary intention, could either

read or secure a copy if he wished to do so. Persons having

a particular interest in the subject matter of the work

being the class of persons with whom 35 U.S.C. 102(b) is

concerned in this regard, such availability to any of that

class of persons, without limitation to specific persons for

purposes of secrecy, should suffice as constituting exposure

to the public within the clear meaning of the decisions in-

terpreting that law. Thus, it should be immaterial that

only students, faculty, and staff of a university, for ex-

ample, may have such unrestricted access, or only the

members of a professional society, or the like.

Obviously, the controlling principle is not limited by

the dictionary or official name given to the repository of

one or more copies of the work, such as “library,” or “pub-

32

lications office,” or “book store,” or the name Biven to the

person in charge or to members of his staff, such ag +,

brarian.”

Looking at principle, rather than mere words or

it seems evident beyond logical argument, that

Engineering Report No. 2 (DX 8) in this case became ,

publication on April 30, 1959, within the meaning of 35

U.S.C. 102(b). Such being the case, it is respectfully sub.

mitted that the courts below erred in failing to hold the

Isbell patent invalid on that ground.

CONCLUSION.

It is respectfully urged that both Question I and Que.

tion II, above, be considered and that the decisions helo

be reversed by a holding that the Isbell patent in suit j,

invalid for each of the two main reasons presented, ie,—

1. Because the invention of the patent was obvious

under 35 U.S.C. 103, and

2. because the invention of the patent was described

in a printed publication more than one year be

fore the application for the patent, in violation of

35 U.S.C. 102(b).

Respectfully submitted,

Harotp F. McNenny,

JOHN F. PEARNE,

Attorneys for Amicus Curiae,

The Finney Company.

Of Counsel:

McNEnNny, FARRINGTON, PEARNE & GORDON,

920 Midland Building,

Cleveland, Ohio 44115,

WALTHER E. Wyss, Esq.,

Mason, KoLEHMAINEN, RATHBURN & Wyss,

20 North Wacker Drive,

Chicago, Illinois 60606.

Gupte

BLONDE!

UNIVERS

JFD E

OBJECTION T'

FOR LEAVE

Of Counsel :

Merriam, M

30 Wes

Chicags