Appendix — Bausch & Lomb Optical Co. v. Lyon

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APPENDIX

(910a)*

Opinion (Decision)

UNITED STATES DISTRICT COURT

WESTERN DISTRICT OF NEW YORK

Civil Action No. 4168

Dean A. Lyon, 1821 P Street, S. E., Washington, D. C.,

Plaintiff,

v

Bauscn & Loms Oprticat Co., 626 St. Paul Street,

Rochester 2, New York, Defendant.

Decided December 31, 1953.

B. Edward Shlesinger, Rochester, N. Y., Attorney for

Plaintiff; Cushman, Darby and Cushman, Washington,

D. C.; John W. Malley, C. Willard Hayes, of counsel.

Edward H. Cumpston, Rochester, N. Y., Atterney for

Defendant; G. A. Ellestad, of counsel.

This case involves a claim for damages based upon

the alleged infringement of plaintiff’s patent No. 2,398,382

on a method for applying hard, durable, low-reflecting

films of inorganic salts on the surfaces of optical elements.

At the trial the complaint was amended to add a claim

for damages for unjust enrichment. The invention cov-

ered by the patent is an improvement in the art of apply-

ing a stable, waicr-insoluble, evaporated, inorganic salt

coating (notably magnesium fluoride) on the surfaces of

optical elements. Prior to the invention optical elements

had been coated with such imaterials but the coatings

had not been consistently rugged and durable. Handling,

usage, and climatic conditions had tended to damage or

* The trial Court’s on and findings are for convenience herein-

after reprinted from Volume II of Defendant-Appellant’s appendix in

the Court of A’ with the “DA” page numbers (910a-947a) from

that appendix being indicated.

2a

remove the coatings. The plaintiff's method provides

for the formation of a consistently hard, durable and

tenacious coating by heating the optical surfaces to an

elevated temperature while they are in a vacuum cham-

ber, such as a bell jar, and in evaporating suitable inor-

ganic salts to the optical surfaces in the vacuum chamber

while the surfaces are maintained at an elevated tem-

perature. The need for such rugged coatings had been

felt in the art since the time it was first learned that such

evaporated coatings would add to the efficiency of optical

elements. The lack of consistent ruggedness of the coat-

ings had imposed inherent limitations on their use in the

(91 la)

industry. It had been generally regarded as necessary to

limit the use of coatings to inside surfaces where they

were protected from handling and to leave the outside

surfaces uncoated because of the risk of damage to un-

protected surfaces. Prior invention had provided means

for hardening the coated surfaces by baking the optical

elements in air after they had been removed from the

vacuum chamber. This method was commonly referred

to as post-baking. Prior methods had also been used to

pre-heat the optical elements to clean them before they

were placed in the vacuum chamber. Means had also

been used to get a completely clean condition within the

vacuum chamber by creating an electrical discharge in

the vacuum chamber, known as ‘‘glow discharge.’’ All

of such prior methods left much to be desired in respect

to the quality of ruggedness and durability of the coated

surfaces,

In the latter part of 1940 the Naval Gun Factory at

Washington was interested in putting into production on

a mass scale the coating of optical elements for the Navy.

It had been discovered by naval authorities from exam-

ination of a German bombsight in 1940 that the Germans

had been coating optical elements for at least % years.

The plaintiff had had some experience in the technique

EE

3a

of applying coated films in vacuum. He was hired as a

civilian employee at the Naval Gun Factory to develop

for the Navy a program in setting up the production of

coated optical elements for Navy use. He reported for

work in January of 1941. After experimenting with the

known methods of hardening evaporated films he con-

cluded that the films so produced were too soft for Navy

use. During the course of his experiments at the Naval

Gun Factory in June of 1941 he hit upon the idea of heat-

ing the optical elements to be coated in the vacuum cham-

ber and maintaining the heated condition of the elements

while the evaporated coating was being applied in the

(912a)

vacuum. Further experiments along this line convinced

him that the use of this method of hardening the coatings

provided consistent hardness and adherence of thin films

so applied. After repeated tests for hardness and dura-

bility, and after the application of the process to actual

optical instruments such as binoculars and submarine

periscopes, the method was eventually applied to prac-

tically every type of optical instrument used by the Navy.

It was also adopted by the War Department for the

Army and after the Second World War by the optical

industry generally. Plaintiff’s application for a patent

was filed November 17, 1942. Tne patent was granted

April 16, 1946.

The defendant was engaged during the Second World

War in performing contracts with the United States Gov-

ernment for the manufacture of optical instruments for

the Army and Navy. In connection with its work under

such contracts officials of the defendant visited the Naval

Gun Factory in 1942 and inspected the work being done

these with the plaintiff’s process in the coating of eptical

elements for the purpose of adopting it in its meaufac-

ture of optical instruments for government use under its

contracts. As required by its contracts with the Govern-

ment, it coated optical elements produced for the Gov-

all

4a

ernment using the plaintiff’s method for hardening the

coatings. After the Second World War the defendant

continued to use plaintiff’s method for coating optical

elements in its commercial manufacture of optics not

made for use of the Government. Plaintiff’s offer of a

license under his patent to the defendant for its use in its

commercial manufacture of optics was rejected. Hence

this suit.

Defendant asserts that the patent is invalid for lack of

novelty and invention over prior patents cited by the Ex-

aminer. Plaintiff’s patent specification shows prior knowl-

edge of metallic fluoride reflection-reducing films and the

(913a)

practice of pre-heating the surface to be coated to im-

prove the tenacity of the film to the surface and to im-

prove the ruggedness of the film itself. It also shows

prior knowledge of post-baking in air to improve the

tenacity and ruggedness of light transmission films. Heat-

ing in the vacuum chamber, while a coating is being evapo-

rated on to the optical surface, had not been disclosed in

the art of applying inorganic salts to an optical surface.

Darrah (Patent No. 1224339) disclosed coating a hot

metal powder such as aluminum or zine onto a hot metal

base such as iron in the presence of a partial vacuum.

The coating metal is absorbed into the metal base. Cart-

wright (Patent No. 2281474) disclosed the method of coat-

ing an optical element with a reflection-reducing inorganic

salt such as magnesium fluoride by evaporating in

vacuum. He follows this treatment in vacuum by post-

baking in air to harden the coating. Sabine (Patent No.

2301456) refers by inference to the post-baking in air

used by Cartwright. Prior patents (Macksoud No. 2217228

and Birdseye No. 2237328) had disclosed the simultaneous

heating and coating of the inside of a lamp bulb in a

vacuum with an evaporated metallic coating. These two

patents related to the use of metals to form opaque, re-

flective coatings in a field not related to the art of coat-

SS

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ing optical elements. It was not obvious to those working

in the field of coating optical elements with thin films of

inorganic salts to use the step of heating in the vacuum

shown by Macksoud and Birdseye working in a different

field with metals. The plaintiff’s method of hardening

the coated optical surface provided an improved, durable

and tenacious coating such as had never been obtained

by prior patentees. Plaintiff’s process removed the in-

herent limitations of the use of coated optics to protected

surfaces and made such use available for general appli-

cation, including application to external and unprotected

optical surfaces without risk of damage from assembling,

(914a)

handling, usage and atmospheric or climatic conditions.

This was a distinct advance in the art. All of the patents

referred to above were considered by the Examiner in

the Patent Office. Plaintiff’s disclosure was addressed to

the problem of soft coatings, coatings too fragile to per-

mit their use in general application in the optical in-

dustry because of the risk of damage to the coatings from

ordinary usage and handling and atmospheric conditions.

Plaintiff’s method of hardening was a successful solution

of the problem. The presumption of novelty and inven-

tion is strengthened since the patents relied on to show

lack of invention were considered by the Examiner. There

was no showing at the trial that the Examiner was wrong

in his conclusion. J. A. Mohr and Son v. Alliance Securi-

ties Co., 14 F. 2d 799. Celanese Corp. v. Essley Shirt Co.,

98 F. 2d 895.

Defendant asserts that the patent is invalid by reason

of patents, publications, and admissions of the plaintiff at

the trial, which material was not before the Examiner.

Cartwright (Patent No. 2281475) disclosed both pre-heat-

ing the optical surfaces prior to evaporating the coating

in the vacuum and post-baking the metallic salt coating.

Biggs (Patent No. 2123706) disclosed heating in the

vacuum during evaporation of metal on the inside of a

—

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lamp bulb. Fink (Patent No. 1738991) disclosed the use

of the same process to coat with metal the inner surface

of a thermos bottle to produce a refiective coating. Wink-

ler (Patent No. 1982774) disclosed the same process with

metal to coat mirrors. It also referred to post-baking in

air and to electrical discharge in vacuum. Long (Patent

No. 2236911) also dealt with coatings of metal on mirrors

to make a reflective coating. The publication of Burgers

& Dipple (1934) is an academic study to determine the

structure of films of inorganic salts to determine their

structure. Post-baking is referred to. There is no men-

tion of hardness or of the intent to harden the coatings.

(915a)

Cartwright, the patentee in patents already referred to,

was co-author with Strong of an article entitled ‘An

Apparatus for the Evaporation of Various Materials in

High Vacua.’’ This article was published in ‘‘Review of

Scientific Instruments,’’ Volume 2, March, 1931. This

articles does not disclose any heating in vacuum as a part

of a method to secure films of inorganic salts. The ref-

erence to the use of heating in vacuum is in connection

with the deposition of silver on glass to make a reflective

coating. It is significant that Cartwright was still advo-

eating the use of post-baking optical surfaces coated with

inorganic salts at the time the plaintiff claims to have

made his discovery of heating in vacuum. This was ten

years later than the publication of the article above re-

ferred to. If this article can be said to suggest the ad-

vantages of heating in the vacuum in applying coatings

of inorganic salts to optical elements it seems strange

that Cartwright himself did not use it. He himself ap-

plied for a patent on the inferior and now virtually aban-

doned method of post-baking long after the publication

of the article. Cartwright wrote another article which

was published in ‘‘Review of Scientific Instruments,’’

Volume One, December, 1930, entitled ‘‘Cathode Sputter-

ing.’’ Cartwright admitted in his testimony at the trial

———

_——

) 7a

the difference between evaporation coating and sputter-

ing is fundamental and that inorganic salts cannot be ap-

plied by sputtering.

The defendant asserts that the patent is invalid because

of prior invention, knowledge, use and public use by Cart-

wright. There is no gainsaying the fact that Cartwright

was outstanding in the field of coating optics, nor that he

had experimented to discover means of hardening the

coatings, nor that the particular process of heating in the

vacuum had come to his attention prior to 1941. These

admissions pose important questions, i.e., whether Cart-

wright properly estimated the value of heating in the

(916a)

vacuum to harden the coatings, and if he did properly

estimate its value, whether he brought it to light in the

art and urged its adoption. In November, 1939, Cart-

wright was an instructor at Massachusetts Institute of

Technology in the field of physics. As early as November

8, 1939, he had devised a crude apparatus consisting of

a metal plate with grooves to receive glass lantern slides

to be coated. The plate was heated to various tempera-

tures. Glass slides were inserted in the grooves in con-

tact with the hot metal plate, which was then suspended

in a vacuum chamber. By this means the heat of the

glass slides was preserved in the vacuum while evaporated

coatings of inorganic salts were applied to the slides.

The results of Cartwright’s experiments with this appa-

ratus were reported in a letter by Cartwright to Mr. Car-

roll Wilson of Research Corporation, New York City,

dated November 30, 1939. Attached to that letter was

another page marked ‘‘continued December 4, 1939.’’

This latter page referred to equipment for heating glass

by radiation while the glass was being treated in vacuum.

He reported that ‘‘this looks like the logical way to treat

photographic lenses during their manufacture as well as

eye glasses.’’ Research Corporation as assignee was

exploiting by licenses certain of Cartwright’s patents, in-

~~

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cluding his patent covering post-baking, under an ar-

rangement by which the proceeds were used for research

and under which Cartwright received some financial bene-

fit. While Cartwright was at M.I.T. he carried on as a

side line a small scale commercial business of coating

optical elements for persons and corporations who had

become familiar with his work. He devised a crude cop-

per oven open at both ends, containing heating coils, de-

signed to heat lenses electrically while under vacuum.

This oven would accommodate one or two lenses. In

connection with this commercial work he hired a student

named Clark to assist him. This commercial work was

(917a)

carried on in an M.I.T. laboratory when students were

not using the laboratory. Clark hardened the coatings by

post-baking and on occasions by heating in the vacuum,

using the copper oven. This was during the scholastic

year ending in May, 1940. Clark was then hired by Na-

tional Research Corporation, Boston (not to be confused

with Research Corporation), in charge of the develop-

ment of lens coating. He was hired because of his ex-

perience in high vacuum work and his knowledge of coat-

ing lenses. When he was about to leave M.I.T. to go to

National Research Corporation, he had a discussion with

Cartwright regarding the method of vacuum heating for

hardening coated lenses. Cartwright regarded National

Research Corporation as a potential competitor of his in

his commercial enterprise. Cartwright told Clark that

he wanted to work on the method of heating in vacuum

a little more and did not want it to be known publicly at

that time (May, 1940). He asked Clark not to divulge

this method of coating at that time. Clark complied with

Cartwright’s request, and although employed at National

Research Corporation until October, 1942, he never used

nor disclosed any method for hardening except post-

baking. His calculated suppression of the idea and of

the use of heating in the vacuum was directly attributable

—

9a

to Cartwright’s request to Clark not to divulge the idea

because Cartwright did not want it to be known publicly.

In May of 1940, at the particular time that Cartwright

expressed to Clark his desire that the idea of heating in

the vacuum to harden coatings should not become public

knowledge, the Navy was interested in the application of

thin films to submarine periscopes. Cartwright left M.I.T.

about August 1, 1940, to take a position as the head of the

research department at Corning Glass Works. But be-

fore commencing his work at Corning Glass Works he

was hired under contract with the Navy for compensation

to go to the Naval Research Laboratory at Washington

(918a)

for one month to install for the Navy a technique in coat-

ing optical elements and to instruct personnel of the Naval

Research Laboratory in the basic principles of high

vacuum technique and anti-reflection coatings. He spent

the month of August, 1940, at the Naval Research Labora-

tory in Washington. He took with him vacuum equip-

ment that he had constructed for use in his employment

at the Naval Research Laboratory. While there under

contract he coated the lenses of a submarine periscope.

These coatings were hardened by post-baking only. They

turned out to be soft and unsuitable and could be brushed

off with a camel’s hair brush. As far as hardness was

concerned, they were a failure. Cartwright says the rea-

son for their lack of hardness was his inability to secure

a good vacuum in the short time that he was employed

| at the Naval Research Laboratory. It is important to

note however that Cartwright did not take to Washington

for use in his employment at the Naval Research Labora-

tory his crudely constructed copper oven or any other

equipment designed for use in heating in vacuum for

hardening, and that he never intended to use the method

of heating the lenses in vacuum for hardening the coat-

ings during his work at the Naval Research Laboratory.

At no time during his work there did he ever disclose to

—~

anyone the idea that evaporated coatings could be made

more rugged by the use of heating in the vacuum.

Directly after his work at Naval Research Laboratory

in August, 1940, he commenced his employment at Corn-

ing Glass Works. He supplemented his salary there by

continuing his commercial enterprise of coating lenses.

This work he did with the assistance of his wife in the

basement of his home, and she usually applied the coat-

ings. The testimony of Cartwright and his wife regard-

ing the use of heating in the vacuum for hardening in his

commercial work at Corning prior to Lyon’s claimed in-

vention is vague, uncertain, unsupported by any docv-

(919a)

mentary evidence (although there is documentary evidence

of post-baking), and unpersuasive. This proof of antici-

pation does not measure up to the quality of proof re-

quired to defeat a patent. The Barbed Wire Patent, 143

U. S. 275. On all the evidence regarding Cartwright’s

experiments, and his work with heating in the vacuum

for hardening evaporated coatings, I conclude that Cart-

wright did not appreciate the benefits of heating in the

vacuum, and that any such use by him was sporadic and

inconclusive as to any definite advantages obtainable. He

did not properly evaluate the results obtainable by heat-

ing in the vacuum to harden evaporated coatings. Cer-

tainly he did not bring it to light in the art, nor urge its

adoption. Quite the contrary, the suppression of what-

ever Cartwright had discovered regarding the use of heat-

ing in the vacuum was due to his own efforts to withhold

it from public knowledge and to his own failure to dis-

close it in his work at Naval Research Laboratory when

he was under contract for compensation to give the United

States Navy the benefit of whatever knowledge he had

that could be used in applying evaporated coatings to op-

tical elements for the Navy. I am not persuaded by the

evidence that Cartwright concealed or withheld the idea

and use of heating in the vacuum for hardening with

| lla

knowledge that that was the best method for obtaining

hard and rugged coatings. I think rather that whatever

experiments he had conducted along that line and what-

ever occasional use he had made of it in his commercial

work had convinced him that it was inferior in results to

his own patented post-baking method, and that the re-

sults obtained were not worth the effort, and did not war-

rant bringing it to light in the art. Even today when

virtually the whole industry has abandoned post-baking,

Cartwright is still not convinced that heating in the

vacuum is superior to post-baking. His testimony at the

trial leaves no doubt about the fact that he is still un-

(920a)

certain whether one ‘‘could not get as hard a film if you

left out the actual heating in the vacuum.’’ And he ad-

mitted in his testimony at the trial that that was the way

he felt about it in 1940 and 1941. Since Cavtwright’s use

did not in fact contribute to the art, he should not be

deemed a ‘‘first inventor’’ of the process. Gillman v.

Stern, 114 F. 2d 28, 31.

Cartwright was not alone in attempting to improve the

quality of ruggedness of evaporated coatings. Hewlett, a

distinguished scientist employed in research at General

Electric Company, began intensive work directed to the

improvement of non-reflecting films on glass in January,

1938. One of the problems with which he was confronted

early in his work was that of making the coatings more

durable. Some time in 1940 he conducted experiments

using heat in the vacuum while the coatings were being

evaporated onto glass. His immediate interest at that

time was in connection with the development of a non-

reflecting glass cover for photographic light meters. In all

of his experiments in which he used heat in the vacuum

during evaporation, he used it in connection with other

steps designed to improve the ruggedness of the coatings,

including pre-heating and post-baking in air. None of his

experiments were designed to show the results of heating

—

12a

in the vacuum alone. His final experiment using heat

in the vacuum conducted on July 30, 1940, was designed

to answer the question whether it is necessary to have the

glass plate hot while it is receiving the evaporated coating.

In this experiment he also used pre-heating and _post-

baking in air. He concluded by this final experiment that

heat in the vacuum was not a necessary step and there-

after he made no attempt to incorporate that step in his

work of making non-reflecting films. As a result of his

experiments Hewlett concluded that pre-heating, the se-

curing of a high degree of vacuum, and post-baking were

the important steps to secure rugged films, and that hav-

(921a)

ing performed those steps he regarded heating in the

vacuum as an unnecessary step, and he therefore aban-

doned any further efforts in the use of heating in the

vacuum. It is interesting to note that Dr. Hewlett’s

diary contained an entry dated July 28, 1940, two days

before Dr. Hewlett’s final experiment which led to the

abandonment of the step of heating in the vacuum, which

recite that Dr. Coolidge (one of Hewlett’s associates

at General Electric) had written to Cartwright’s represen-

tatives to find out the details of Cartwright’s procedure

for hardening and waterproofing films. The reply to

the request was a short communication stating the es-

sential points to be (1) pre-heating; (2) post-baking; (3)

cooling the glass and the immediate application of a

waterproofing agent. No reference was made to the use

of heat in the vacuum. This was immediately prior to

Cartwright’s employment at the Naval Research Labora-

tory. Cartwright had previously used heating in the

vacuum along with his post-baking and had so informed

Hewlett in November, 1939. Cartwright’s reply referred

to in Hewlett’s diary lends support to the conclusion that

Cartwright did not properly evaluate the advantages of

heating in the vacuum and that by July of 1940, he also

had abandoned its use. This would explain Cartwright’s

13a

failure to disclose the idea of heating in the vacuum dur-

ing his employment at Naval Research Laboratory in Au-

gust of 1940. Unlike the inventor in Corona Cord Tire

Co. v. Dovan Chemical Corp., 276 U. S. 358, relied on by

defendant, Hewlett did not reduce the use of heating in the

vacuum to practice so as to demonstrate the practicability

of the process. His experiments led him to the exact

opposite conclusion, namely, that it was not practicable

and he therefore abandoned it.

Joseph Beggs was employed at Eastman Kodak Com-

pany. From the Fall of 1939 to the Fall of 1940 he was

employed in the Laboratory at Kodak’s Hawkeye Divi-

(922a)

sion, where work on non-reflecting films on lenses was

being carried on. Up to that time, Kodak’s work on

hardening magnesium fluoride coatings had been done

mainly by post-baking. The coatings produced were still

not hard enough to withstand ordinary cleaning methods.

The use of coatings was therefore restricted mainly to

inside surfaces. Beggs conducted one experiment using

heat in the vacuum for hardening. He utilized the tung-

sten filament of an incandescent lamp bulb to supply the

heat. He said this method produced a harder coating than

the post-baking method. If any appreciable advantage

was uncovered from Begg’s experiment, it had no discern-

ible impact on Kodak’s methods of hardening. Ap-

parently the result of Begg’s experiment went unnoticed by

his superiors responsible for Kodak’s program for coat-

ing lenses. There was no activity in the Kodak labora-

tory involving the use of heat in the vacuum from the

time of Begg’s experiment in April, 1940 to the time

the Lyon’s process was adopted in production at the

urging of the United States Navy. Its use by Kodak

was urged by the Navy in 1943, but it was not actually

adopted until 1944. On February 24, 1941, a report was

made by Dr. McLeod, in charge of Kodak’s program of

coating lenses, on the subject ‘Proposed Experiments In

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Coating With Fluoride.’’ This was a resume of the

progress of experimental work on coating. It is note-

worthy that it made no mention of the idea of heat-

ing in vacuum. Another report, dated September 30,

1941, was made by Dr. McRae of the Kodak laboratory

on the subject ‘‘Report on Progress of Development

and Experimental Work in Lens Coating.’’ The methods

of hardening discussed in the report were the use of pre-

heating by an oxy-hydrogen flame, post-baking and glow

discharge. At this time Kodak was still searching for

means to improve the ruggedness of evaporated coatings.

Post-baking and the use of oxy-hydrogen flame had been

(923a)

abandoned. The method of glow discharge was then

regarded as the most promising. No reference was made

in that report to the Begg’s experiment using heat in the

vacuum. For all practical purposes, Begg’s idea of

using heat in the vacuum had been abandoned. Early in

1943, Lyon’s successful use of heat in the vacuum at the

Naval Gun Factory came to the attention of Kodak off-

cials. Then for the first time the Begg’s experiment was

reanimated. Beggs left Kodak’s employment in August,

1942, more than two years after his experiment in April,

1940. On April 17, 1943, Kodak filed a patent applica-

tion in the name of Beggs. After the issuance of the

Lyon’s patent on April 16, 1946, Kodak’s Patent Depart-

ment copied the claims of the Lyon’s patent in the pend-

ing Begg’s application, thus provoking an interference

in the Patent Office.

This interference was subsequently settled by a written

agreement dated October 23, 1947, between Kodak and

Lyon which provided for the assignment by Kodak to

Lyon of the Beggs application, subject to the reservation

that Kodak should have the irrevocable royalty-free right

to operate under the Beggs application and any patent

which might issue thereon, and subject to a non-exclusive

royalty-free license to the United States Government

l5a

under the Beggs application. The agreement also pro-

vided for the grant to Kodak of a paid-up non-exclusive

license to operate under the Lyon patent. The agreement

further provided that Kodak was to supply digests of

proposed evidence regarding Begg’s claimed invention

to the plaintiff’s attorney. In accordance with this agree-

ment, Kodak did supply digests of the proposed evidence

regarding Begg’s claimed invention. In the interference

it was claimed by Kodak that Beggs had completed the

invention early in 1940. Lyon was advised by his attor-

ney that in the light of all the available evidence he had

priority as to the invention involved in the interference.

(924a)

The interference was dismissed accordingly. On the evi-

dence at the trial, Lyon’s claim to priority over Beggs

was justified. There is no support in the evidence for the

defendant’s charges of fraud on the Patent Office and the

public, suppression of evidence as to priority of inven-

tion, or secrecy, in connection with the agreement be-

tween Lyon and Kodak for the settlement of the issues

involved in the interference proceeding.

Neither Hewlett nor Beggs contributed any new infor-

mation to the art. Their work therefore may not be

held to anticipate plaintiff’s invention. Metallizing

Engineering Co. v. Kenyon (supra), page 519.

The defendant contends that the patent is invalid

by reason of public use by the Navy and by the plain-

tiff more than a year prior to the filing of the applica-

tion for a patent. Lyon made his claimed invention

in June, 1941, while in the employment of the United

States Navy as a civilian employee at the Naval Gun

Factory. He continued in his employment at the Naval

Gun Factory conducting further experiments and tests

in perfecting the invention and in preparation for pro-

duction. His application for a patent was filed November

17, 1942. This defense calls for an examination of the

nature of plaintiff’s use of the invention between June,

?

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1941, the claimed date of invention, and November 17,

1941, one year before the filing of plaintiff’s patent ap-

plication. Lyon was not ready to say in June, 1941, that

the coatings produced were such as would suit the needs

of the Navy. Tests were required to demonstrate that

the coatings would be satisfactory to the Navy, including

abrasion tests, soaking the films in water, subjecting the

coated lenses to salt sprays and subjecting coated lenses

to actual use. Machines had to be designed for use in

production. The development was still in an experimental

and testing status in the fall of 1941. All of this de-

velopment work looked forward to production in 1942.

($25a)

In September, 1941, test coatings were applied to a small

number of old World War I binoculars, which were used

for such application by arrangement with the Navy officer

in charge of the optical shop. These coated instruments

were introduced into the assembly line without informing

the personnel that the elements were coated. They were

handled in the normal routine manner. This test demon-

strated successfully the uniformity of the coatings from

an optical viewpoint, and gave assurance that the coated

elements would stand the normal handling of routine as-

sembly. It was then decided to make a test application

of coatings to larger and more complicated instruments.

Coatings were accordingly applied to the elements of one

of the telescopes in production in the Naval Gun Factory.

This test proved successful both as to light transmission

and durability of the coatings. By that time, October,

1941, it was decided by officials of the Navy that experi-

mental work had developed as to such a stage as would

warrant the placing of the process in production. Funds

had to be procured for the purchase of necessary equip-

ment. On October 30, 1941, funds were authorized. By

December 30, 1941, a list of items of necessary equip-

ment, which was thereafter to be purchased for produc-

17a

tion units, had been prepared. In January, 1942, it was

decided to apply the process to a set of optical elements of

a submarine periscope. This was done and the test

proved successful. In the Summer of 1942, the first

production of submarine periscopes with optical elements

coated by the Lyon process was had in co-operation with

the Kollmorgen Optical Co., the manufacturers of sub-

marine periscopes. All of this work in development of the

invention up to the time of first production and for a

long period after that, was surrounded by the strictest

secrecy under Navy orders and regulations. The patent

application was kept in strict secrecy. The plaintiff was

ordered by the Commissioner of Patents not to publish

(926a)

or disclose the invention. The plaintiff had no private

coating laboratory; he never sold any optical instruments

or lenses coated in accordance with the invention. He

took no action at all to realize any profit from the in-

vention until after the issuance of the patent in 1946.

It is clear from the evidence that on November 17, 1941

there had been no production at all. The status of the

invention at that date was that development had pro-

gressed to such a point that funds had been authorized for

the purchase of necessary equipment for production units.

It was not until December 30, 1941, almost a month and a

half later, that a list had been prepared of items of neces-

sary equipment to be purchased for production units, and

not until the Summer of 1942, that the first production

using the Lyon process took place in coating the elements

of submarine periscopes in co-operation with Kollmorgen

Company. Defendant does not make it clear what particu-

lar use is claimed to be a public use so as to defeat the

patent, but rests its argument on a statement in the brief

not substantiated by the proof, that the process was a

success from the start and was carried on continuously

from June, 1941, throughout the War. From this it argues

that the use of a process by a patentee in making and using

18a

the process for its intended purpose for more than a year

prior to his filing date requires application of the prin-

ciple of forfeiture to invalidate the patent, even where

the use of the process is secret and cannot be ascertained

from the product. For its argument it relies on Metal-

lizing Engineering Co. v. Kenyon, 153 F. 2d 516, and cases

approving that decision. That case holds that it is the

nature of the inventor’s use more than one year before fil-

ing his application which controls, and if he is using the in-

vention commercially, for profit, his patent is invalid.

There is no quarrel with the doctrine. The trouble with

the argument is that the facts as to the plaintiff’s use

and the Navy’s use of the invention prior to November

(927a)

17, 1941, do not fit the doctrine. There was no use at

all either by the plaintiff or the Navy prior to November

17, 1941, except experimental use to demonstrate uni-

formity of the coatings from an optical viewpoint and

durability of the coatings.

The plaintiff has a valid patent. The defendant has

infringed the patent by its use of the process covered

by the patent in its commercial manufacture of optics

not made for use of the United States Government.

By amendment allowed at the trial, the plaintiff stated

a second cause of action alleging that the defendant ac-

quired its information and knowledge regarding the proc-

ess covered by the patent under confidential disclosures

made to the defendant while the invention was maintained

in a secret status by the Navy Department, and that

this confidential information was given to the defend-

ant for the sole purpose of allowing the defendant to prac-

tice the invention in making optical elements for the Navy,

and that the defendant, without obtaining plaintiff’s per-

mission, wrongfully made use of such confidential dis-

closures and proceeded to use such confidential informa-

tion for its own non-governmental work and thereby

—

19a

profited from such wrongful use and was unjustly enriched

thereby at plaintiff’s expense. In the original complaint

the plaintiff invoked the jurisdiction of this court upon

the ground that the suit was one under the Patent Laws,

infringement of U. S. Patent No. 2,398,382, being charged

in the complaint. Upon amending the complaint to state

a second cause of action, no other ground of jurisdic-

tion was stated. Regardless of that, I think that the sec-

ond cause of action may fairly be construed to assert a

claim of unfair competition related to the cause of ac-

tion for patent infringement, and that this court has juris-

diction thereof under 28 U. S. C. A. 1338 (b).

(928a)

Defendant’s use of the process in its non-governmental

work commenced at about the time that the plaintiff

wrote the defendant calling its attention to the fact

that he had received a patent. From the time of the is-

suance of the patent the information regarding the proc-

ess was public knowledge. Therefore the use by the de-

fendant of the process after the issuance of the patent

was not wrongful, apart from the risk of infringement.

Schreyer v. Casco Products Corp., 190 F. 2a 921, 924. It

is true that the defendant became skilled in the operation

of plaintiff’s process prior to the grant of the patent, and

that this cireumstance gave the defendant the advantage

of being able to commence promptly to use the process

on its non-governmental work. This advantage, however,

80 acquired was an unavoidable incident to the lawful use

of the process by the defendant in performing its govern-

ment contracts for the manufacture of the optics for the

Navy. Since there was no unlawful use of the process

prior to the issuance of the patent, the defendant may not

be held to have been unjustly enriched by making use of

confidential disclosures regarding the process,

The plaintiff should have judgment providing for; an

injunction against further infringement by the defend-

aa

—

20a

ant; an accounting for profits and damages resulting

from the infringement; ordinary taxable costs. Separate

findings and conclusions are filed herewith.

HAROLD P. BURKE

U.S. District Judge

December 31, 1953.

(929a)

Findings of Fact

UNITED STATES DISTRICT COURT,

Western District or New York.

[Same Trrzz.]

1. The suit herein for infringement arises under the

Patent Laws of the United States. The cause of action

for unfair competition is related to the claim for infringe-

ment.

2. Plaintiff is the owner of the entire right, title and

interest in United States patent No. 2,398,382 dated April

16, 1946.

3. A search for a practical means to reduce light re-

flection from optical surfaces has been going on for at

least 50 years. It was known as early as 1936 that coat-

ings of metallic fluorides, when deposited on the surfaces

of the optical elements in vacuum would reduce light

reflection. In the years 1936 through 1942 skilled scien-

tists were working intensively to improve the hardness

and durability of such films. It was generally recognized

during this period that the soft or fragile nature of such

films had to be overcome before they could be brought

into practical and widespread use. Such efforts were ex-

erted by Eastman Kodak Company, General Electric Com-

pany, Research Corporation of New York, using the work

of Dr. C. Hawley Cartwright, National Research Cor-

poration and the Navy Department of the United States

2la

Government. Various methods to solve the problem were

employed in these efforts, including: (a) post-baking and

pre-heating, (b) intense cleaning of the optical surfaces

by the use of an oxy-hydrogen flame, (c) cleaning of the

optical surfaces and the interior of the vacuum chamber

or bell jar by a method known as glow discharge, and the

use of special electrodes in connection with the glow dis-

charge method.

(930a)

4. These efforts were unsuccessful from a practical

standpoint, although some of them were used to a limited

extent. They were all supplanted and made obsolete by

the method of the patent in suit, which discloses a method

of securing hard films of this type by heating the optical

surfaces to an elevated temperature while in the vacuum

chamber and evaporating the inorganic salt coatings onto

the surfaces while they are maintained at an elevated

temperature in the vacuum. The method employing post-

baking and pre-heating had b-2n given wide publicity.

This method was developed and advocated by Cartwright

and Dr. Arthur F. Turner, employed by the defendant.

It involved heating the optical elements in the outside air,

prior to evaporation of the inorganic salt coating in the

vacuum, and baking the optical elements thus coated in

air after evaporation. This was generally known as the

Cartwright post-baking method. The oxy-hydrogen flame

treatment was the subject of experiments by Eastman

Kodak and it involved playing a very hot flame upon the

surfaces of optical elements to thoroughly clean them,

before placing them in the vacuum for evaporation. The

glow discharge method involved the cleaning of the lenses

and the interior of the bell jar by ionic bombardment.

This practice was widely known in the art and was used

by Eastman Kodak and others. The defendant also used

the glow discharge method in an attempt to secure harder

coatings.

22a

5. During this same period there was some commercial

productioa of optical lenses coated with transmission

films of inorganic salts. Both Eastman Kodak and de-

fendant produced such coatings. The coatings were ap-

plied to optical elements when the latter were in a cold

condition, and in some instances the coated lenses were

thereafter treated with the post-baking process. Coatings

thus produced were relatively soft. The opties so coated

(931a)

required careful handling, and the coatings were applied

only on the inside protected surfaces of the optical in-

struments. During the same period the Cartwright post-

baking method was widely promoted by Research Cor-

poration of New York and the National Research Cor-

poration of Boston.

6. These methods, as used commercially to a limited

extent, were later supplanted by the entire industry, by

the process of the patent in suit, due to the success of

the process, as demonstrated when it was adopted by the

United States Navy. ‘The method of coating on cold sur-

faces as produced by defendant, was so limited in use,

and was so unsatisfactory from a standpoint of dura-

bility, that defendant in 1941 recommended to the Navy

Department that the evaporation process be abandoned.

At that time the defendant also recommended an entirely

different process known as ‘‘leaching,’’ a chemical process,

which was also later abandoned when the plaintiff’s proc-

ess was successfully demonstrated. The glow discharge

method was used to a limited extent, notably by Eastman

Kodak Company, but it was not dependable. The post-

baking process was likewise not dependable and was

found to be unsatisfactory by the Navy when Cartwright

employed it under contract with the Navy in an attempt

to coat the lenses of submarine periscopes in August, 1940.

Then lenses so coated were a failure from a standpoint

of hardness and durability of the coatings,

23a

7. The plaintiff was employed by the United States

Navy at the Naval Gun Factory in Washington as a

civilian employee. He commenced work in J anuary,

1941, and he was assigned to develop a Navy program in

setting up the production of coated optical elements for

Navy use. In the early months of 1941 he studied the

existing knowledge of the subject and visited various fa-

cilities which were working with the Navy Department

(932a)

in an effort to obtain coatings of satisfactory durability.

He visited the facilities of the defendant and of the East-

man Kodak Company, and the facilities of National Re-

search Corporation. He found that the coatings then be-

ing applied were not sufficiently hard and durable for the

Navy’s purposes. He was thus faced at the outset with

the difficulty of lack of hardness of the coatings, which

had baffled the most skilled in the art through the pre-

ceding years when intensive efforts were being made to

solve the problem. The persons most skilled in the

art had not discovered the invention of the patent in suit

and had not appreciated that unusual results could be

obtained thereby in securing harder films by practicing the

method as defined in the patent in suit.

8. During the early part of June, 1941, in the course

of plaintiff’s efforts to get into production for the Navy

Department, using the then known techniques, for harden-

ing, he made the discovery that is the subject of the

patent in suit, ie., that coatings of much greater hardness

and durability could be consistently obtained by practicing

a method in which tne optical elements were heated to an

elevated temperature in the vacuum, and in which the

inorganic salts were evaporated onto the heated surface

while they were so maintained in the vacuum. Plaintiff

made his discovery independently, and did not acquire

knowledge of the invention from the prior art or from any

of the facilities which he had visited. He contiaued to

a

24a

work on this discovery and around the first of July, 1941,

he was reasonably certain that he had discovered a suc-

cessful method and at least as early as that date he had

disclosed the method to others and had actually practiced

it for others.

9. In the remaining months of 1941 he proceeded with

further exhaustive experiments and tests to prove the

consistent durability of the films applied in accordance

(933a)

with the method of his discovery. Early in 1942 plans

were made for final production experiments in applying

the films to submarine periscopes for use by the Navy.

In the Spring of 1942, in cooperation with the Kollmor-

gen Optical Company of Brooklyn, manufacturers of sub-

marine periscopes for the Navy, final experimental coat-

ings of submarine periscope lenses was carried out.

These final tests were so successful that orders were is-

sued by the Navy Department to go into full production

using the invention, in coating all submarine periscopes.

Toward the middle of 1942, this production work was un-

derway at the Naval Gun Factory and later in the year

at the Kollmorgen Optical Company. This work was

so successful that all submarine periscopes both new and

in service were successfully coated with the plaintiff's

process.

10. Following this successful work the plaintiff’s method

was applied by the Navy to virtually all important opti-

eal equipment, including binoculars, gun director tele-

scopes, spyglasses and range finders. The success of the |

process was so outstanding that priorities were estab- _

lished for coating the optical instruments of all war ves-

sels, particularly combatant ships, in accordance with the

plaintiff’s method, as soon as the availability of the ships

would permit, and the method was applied to the optics of

both new construction ships, and ships in service. Numer-

ous repair ships and tenders of the Navy were especially

25a

provided with equipment to apply the process at points

adjacent to combat areas. The plaintiff’s invention greatly

benefited the United States Navy and was regarded by the

Navy as the most important development in submarine

periscopes in recent years. Plaintiff received special

citations from the Chiefs of the Bureau of Ships and

Ordnance of the Navy Department, and later by the Sec-

retary of the Navy. The plaintiff’s invention was also

: (934a)

adopted by the Army for its optical equipment, and later

by the industry in general.

11. Plaintiff’s discovery brought forth a method which

was the first to produce transmission type inorganic salt

coatings of such consistent hardness and durability as to

permit mass production of optical equipment with such

coatings applied to both outside and inside optical sur-

faces, although the need for such hard and durable coat-

ings had been apparent for many years.

12. The application for the patent in suit was filed by

the Navy Department on November 17, 1942. There was

no public use of the invention for more than one year

preceding this date. The plaintiff’s work was classified

as military secret and the work which plaintiff conducted

during 1941 was experimental and was carried out at the

Naval Gun Factory under existing secrecy regulations.

Plaintiff made no effort to exploit his invention commer-

cially nor to profit in any way therefrom. Plaintiff had

no private business involving the practice of the inven-

tion for profit, until after the war and after the issuance

of his patent, when he began to license the patent.

13. Late in 1942, the defendant requested permission

to send certain of its scientists, including Dr. A. F. Tur-

ner, to the Naval Gun Factory to visit the plaintiff and to

learn the details of his process, for purposes of the ap-

plication by the defendant of this method to optical equip-

26a

ment being supplied to the Navy. Plaintiff disclosed full

information on his discovery and method to the repre-

sentatives of defendant for this purpose. Upon receiving

this information, defendant recognized that the plain-

tiff’s method had achieved superior results, as far as the

hardness and durability of the films was concerned and

that the films produced by plaintiff’s method were superior

to those previously produced by the defendant. Defend-

ant recognized at this time that the plaintiff’s method dif.

(935a)

fered from its own prior practices in respect that the

optical elements were heated to an elevated temperature

in the vacuum and coated with the inorganic salts while

maintained at the elevated temperature in the vacuum.

14. Defendant commenced production of optics for the

Navy in the Fall of 1942, using the plaintiff’s method, and

by 1943 such production was fully underway. During the

war defendant produced millions of dollars worth of bi-

noculars for the Navy Department, using plaintiff’s

method.

15. Defendant also recognized the importance of plain-

tiff’s method from a commercial standpoint in respect to

the hardness and durability of the films produced by

the method. Toward the end of 1945, defendant publicly

advertised to prospective customers that an outstanding

development had been made during the war in securing

films of increased hardness. In this publicity, defend-

ant claimed credit for the origination of the technique

which gave the harder coatings, and promised prospective

customers that the advantages of this technique would

be made available to them by the defendant after the

war. This improved technique for securing harder

fiims, as referred to in these advertisements, was admit-

tedly originated by plaintiff and not by the defendant as

was claimed in these advertisements.

27a

16. The plaintiff’s patent issued on April 16, 1946. At

about this time defendant commenced to sell lenses com-

mercially which were coated in accordance with the plain-

tiff’s process. This commercial exploitation of the method,

by defendant, was done without obtaining permission from

the plaintiff. Shortly after the issuance of the patent in

suit, the plaintiff requested the defendant to take a

license under the patent. There were some negotiations

between the parties, which did not result in any agree-

(936a)

ment because the defendant was unwilling to pay the

royalty which the plaintiff requested. At the time defend-

ant commenced this commercial work, it was aware that

it was producing the method covered by the plaintiff’s

patent. Up until this time, plaintiff had made no effort

to exploit his invention commercially, nor in any way to

derive profit from it. He had devoted all of his efforts

to developing the use of the invention for the navy

and army during the war.

17. Other optical companies also adopted the plaintiff’s

method for their commercial work at about this time. A

number of these companies, including the Kollmorgen

Optical Company, which had been active in coating the

first submarine periscopes with the method of the inven-

tion, entered into license agreements with the plaintiff on

royalty terms the same as had been offered by plaintiff to

the defendant. The royalty which the plaintiff requested

was reasonable.

18. In the period following the issuance of the patent

plaintiff’s method was receiving widespread use through-

out the industry. The impact on the industry of the use

of plaintiff’s method was substantial, other methods such

as post-baking being supplanted. The records of the Re-

search Corporation, as of that time, indicate that the

licensing program which that company had set up under

the Cartwright patents was paralyzed by the widespread

26a

ment being supplied to the Navy. Plaintiff disclosed full

information on his discovery and method to the repre-

sentatives of defendant for this purpose. Upon receiving

this information, defendant recognized that the plain-

tiff’s method had achieved superior results, as far as the

hardness and durability of the films was concerned and

that the films produced by plaintiff’s method were superior

to those previously produced by the defendant. Defend-

ant recognized at this time that the plaintiff’s method dif-

(935a)

fered from its own prior practices in respect that the

optical elements were heated to an elevated temperature

in the vacuum and coated with the inorganic salts while

maintained at the elevated temperature in the vacuum.

14. Defendant commenced production of optics for the

Navy in the Fall of 1942, using the plaintiff’s method, and

by 1943 such production was fully underway. During the

war defendant produced millions of dollars worth of bi-

noculars for the Navy Department, using plaintiff’s

method.

15. Defendant also recognized the importance of plain-

tiff’s method from a commercial standpoint in respect to

the hardness and durability of the films produced by

the method. Toward the end of 1945, defendant publicly

advertised to prospective customers that an outstanding

development had been made during the war in securing

films of increased hardness. In this publicity, defend-

ant claimed credit for the origination of the technique

which gave the harder coatings, and promised prospective

customers that the advantages of this technique would

be made available to them by the defendant after the

war. This improved technique for securing harder

films, as referred to in these advertisements, was admit-

tedly originated by plaintiff and not by the defendant as

was claimed in these advertisements.

27a

16. The plaintiff’s patent issued on April 16, 1946. At

about this time defendant commenced to sell lenses com-

mercially which were coated in accordance with the plain-

tiff’s process. This commercial exploitation of the method,

by defendant, was done without obtaining permission from

the plaintiff. Shortly after the issuance of the patent in

suit, the plaintiff requested the defendant to take a

license under the patent. There were some negotiations

between the parties, which did not result in any agree-

($36a)

ment because the defendant was unwilling to pay the

royalty which the plaintiff requested. At the time defend-

ant commenced this commercial work, it was aware that

it was producing the method covered by the plaintiff’s

patent. Up until this time, plaintiff had made no effort

to exploit his invention commercially, nor in any way to

derive profit from it. He had devoted all of his efforts

to developing the use of the invention for the navy

and army during the war.

17. Other optical companies also adopted the plaintiff’s

: method for their commercial work at about this time. A

| number of these companies, including the Kollmorgen

Optical Company, which had been active in coating the

first submarine periscopes with the method of the inven-

tion, entered into license agreements with the plaintiff on

royalty terms the same as had been offered by plaintiff to

the defendant. The royalty which the plaintiff requested

was reasonable.

18. In the period following the issuance of the patent

plaintiff’s method was receiving widespread use through-

out the industry. The impact on the industry of the use

of plaintiff’s method was substantial, other methods such

as post-baking being supplanted. The records of the Re-

search Corporation, as of that time, indicate that the

licensing program which that company had set up under

the Cartwright patents was paralyzed by the widespread

28a

adoption of the plaintiff’s invention. The plaintiff’s method

is today accepted and used throughout the entire optical

industry.

19. The defendant is an important and leading com-

pany in the optical industry. Several companies which

were approached by the plaintiff refused to take a license

because of the position taken by the defendant with re-

spect to the patent. Defendant’s knowledge of plaintiff’s

(937 a)

process and the use of the same during the war for

government purposes gave it a great advantage in im-

mediately switching the process over to commercial use

at the end of the war.

20. The defendant now uses the method of the patent in

suit for all of its commercial work. Defendant could

avoid infringement and practice in accordance with its

pre-war method, which it contends was satisfactory for

all commercial work, by simply omitting to turn on the

switch which controls the heater for the optical elements

in the vacuum chamber.

21. Eastman Kodak Company also learned of the patent

in suit from the plaintiff, when its scientists visited

plaintiff at the Naval Gun Factory early in 1943. Plain-

tiff disclosed the details of his method to these repre-

sentatives of Kodak at that time. Upon receiving this in-

formation, Kodak recognized that the plaintiff’s method

produced much harder and more durable coatings than

those which had been previously obtained by Kodak, and

that plaintiff’s method differed from Kodak’s prior prac-

tices in the respect that the optical elements were heated

to an elevated temperature in the vacuum and maintained

at an elevated temperature therein while the evaporated

coatings were being applied. In late 1943, or early 1944

Kedak also applied the plaintiff's method to the produe-

tion of optics on an extensive scale in government work

and later used it in commercial work.

29a

22. Kodak also recognized the commercial possibilities

and value of the plaintiff’s method and shortly before the

end of the war, in 1945, Kodak publicly advertised that

an important technique had been developed during the

war which provided harder and more durable coatings,

and it also claimed to have originated this technique.

(938a)

23. Kodak, after acquiring knowledge from plaintiff of

the success of his method, filed a patent application on the

same method in the name of one Beggs, who was no

longer an employee of Kodak at that time. This applica-

tion was filed because of the knowledge acquired of the

plaintiff’s discovery and the success of his method, and

purported to be based on some experimental work of

Beggs, which had long before been abandoned, and which

had been conducted early in 1940,

24. Whatever work Beggs had done in 1940 was noth-

ing more than an abandoned experiment. There was no

evidence of any activity at Kodak on any invention by

Beggs in the three years after his experiment and up

until the time the Beggs application was filed on April

17, 1943, after the Kodak’s patent attorneys had learned

about the success of plaintiff’s work. There were no

authenticated records of any kind at Kodak referring to

the Beggs work during this period, although Kodak had

a large and well organized patent department and elabo-

rate machinery for recording any important developments

or experimental work. @n the other hand, there were

numerous reports in Kodak’s files showing activity along

other lines, such as the unsuccessful efforts to solve the

problem by the use of oxyhydrogen flaming, by post-

baking and by glow discharge.

25. Kodak reanimated this abandoned experiment of

Beggs and used it as a device to exact a license from the

plaintiff by provoking an interference with plaintiff’s

patent after it had issued, and by alleging under oath that

__

30a

Beggs had earlier conceived and diligently developed the

invention. The plaintiff properly disposed of this inter-

ference after he had received an assignment of the Beggs

application from Kodak under a settlement agreement

between plaintiff and Kodak and when plaintiff learned

of the lack of any evidence at Kodak which would prove

(939a)

_invention by Beggs, by leaving the claims in the Lyon

patent where they had been originally granted. Any

experimental work which was done by Beggs did not

anticipate the invention of the patent in suit.

26. The plaintiff did not unlawfully suppress the Beggs

patent application. The plaintiff’s action in retaining the

claims which were the basis of the interference in the

patent in suit was lawful and proper,

27. Dr. C. Hawley Cartwright commenced work on

vacuum deposition of films as early as 1928. He carried

on experiments at Massachusetts Institute of Technology

during 1938 and 1939, seeking a way to harden the trans-

mission type films of inorganic salts. In November, 1939,

Cartwright was an instructor in the field of physics at

Massachusetts Institute of Technology. As early as No-

vember 8, 1939, he had devised a crude apparatus con-

sisting of a metal plate with grooves to receive glass

lantern slides to be coated. The plate was heated to var-

ious temperatures, glass slides were inserted in the

grooves in contact with the hot metal plate, which was

then suspended in a vacuum chamber. By this method

the heat of the glass slides was preserved in the vacuum

while evaporated coatings of inorganic salts were applied

to the slides,

‘ 28. While Cartwright was at M.LT. he carried on as a

side line a small seale commercial business of coating

optical elements for persons and corporations who had

become familiar with his work. He devised a crude copper

3la

oven open at both ends, containing heating coils, designed

to heat lenses electrically while under vacuum. This oven

would accommodate one or two lenses.

29. This commercial work was carried on in an M.L.T.

laboratory when the students were not using the labora-

tory. He hired a student named Clark to assist him in

(940a)

this work. Clark hardened the coatings by post-baking

and on occasions by heating in the vacuum, using the

copper oven. This was during the scholastic year ending

in May, 1940,

30. Clark was then hired by National Research Cor-

poration of Boston in charge of the development of lens

coatings. He was hired because of his experience in high

vacuum work and his knowledge of coating lenses. When

he was about to leave M.I.T. to go to National Research

Corporation, Cartwright told Clark that he did not want

his work of hardening by heating in the vacuum to be

known publicly at that time, and that he wanted to work

on it a little more, and he requested Clark not to divulge

this method of coating. Clark complied with Cartwright’s

request and although employed at National Research Cor-

poration until October, 1942, he never used nor disclosed

any method of hardening except post-baking. This sup-

pression of the idea and the use of heating in the vacuum

was directly attributable to Cartwright’s request to Clark

not to divulge the idea because Cartwright did not want

it to be known publicly.

31. Whatever experimental work and commercial work

Cartwright may have performed at M.I.T. involving heat-

ing in the vacuum in filming with inorganic salts and

later at Corning, N. Y., was sporadic and inconclusive and

not of such nature as to invalidate the patent in suit. The

evidence with respect to his work both at M.I.T. and Corn-

ing, both experimental and in his limited commercial work

a ;

32a

is uncertain and iuconsistent. He did not realize any

exceptional advertages which would accrue from using

heat in the vacuum because he never did isolate the step

of heating in the vacuum from other steps which he em-

ployed. He took active and extensive steps to maintain

such knowledge as he had about the method in secrecy.

He did some coating with these films of inorganic salts

(94la)

on a limited basis in his home but the evidence shows

that he used his post-baking process mainly. The work

of Cartwright did not anticipate the invention of the

patent in suit.

32. Whenever Cartwright or his assignee had oppor-

tunity to advise anyone who was interested as to the best

method for hardening evaporated coatings, they advised

post-baking. Whenever Cartwright had opportunity to

demonstrate his method, he used post-baking. He en-

joined his associates at M.I.T. to secrecy with respect to

any benefits which might result from the method of heat-

ing in the vacuum and Clark maintained any knowledge he

had on this subject in secrecy, and withheld it from his

employer, National Research Corporation and from the

United States Navy when he was sent to Pearl Harbor

in 1942 to assist in coating the optics of periscopes of sub-

marines which were coming in from combat. As a result,

the optics of these periscopes which were coated were

soft and unsuitable.

33. Cartwright was engaged under contract by the Navy

in 1940 to coat the optics of a submarine periscope in as-

sociation with Kollmorgen Optical Company, at the Naval

Research Laboratory. He did not use heating in the vac-

uum doing this work but rather used post-baking. The

results were a failure from the standpoint of hardness.

He had no intention of using the step of heating in the

vacuum in his work at the Naval Research Laboratory in

1940.

33a

34. Throughout the history of the development of this

art Cartwright advocated, practiced and patented post-

baking. He was widely identified with this method. He

greatly influenced those working in the art in the belief

that post-baking was the method that would secure the

harder coatings. Whatever knowledge he may have had

from heating in the vacuum he maintained in secrecy.

(942a)

Whatever experiments he had conducted along that line

and whatever practical use he had made of it in his com-

mercial use had convinced him that it was inferior in re-

sults to his own post-baking method and that the results

obtained were not worth the effort and did not warrant

bringing it to light in the art. Up to the time that plain-

tiff’s patent application was filed, and even after that time

and up to the present time, Cartwright did not appreciate

the benefits of heating in the vacuum. He did not prop-

erly evaluate the results obtainable of heating in the

vacuum. He did not bring it to light in the art nor did

he urge its adoption. On the contrary, whatever he did

discover regarding the use of heating in the vacuum was

withheld from public knowledge through the affirmative

stepe taken by Cartwright. These affirmative steps were

taken by Cartwright because he had failed to appreciate

the advantages obtainable by heating in the vacuum.

| 35. Dr. Clarence L. Hewlett performed extensive ex-

perimental work for General Electric Company in the

period from 1938 to 1940 in an attempt to solve the prob-

lem of lack of hardness and durability of transmission

type films of inorganic salts. He received information

from Cartwright that the best way to harden the films was

by pre-heating and post-baking. He experimented with a

method involving heating in the vacuum in association

with pre-heating and post-baking, and immediately con-

cluded in this experimentation in the summer of 1940 that

the step of heating in the vacuum was of no advantage.

i...

—

34a

He did not isolate this step from the other steps which

he regarded as more important, which were pre-heating

and post-baking. He abandoned any thought of using

heating in the vacuum after a short series of experiments

and the work of Dr. Hewlett on this subject was an

abandoned experiment. He thereafter adopted post-bak-

ing as the solution of the problem. The work of Hewlett

did not anticipate the invention of the patent in suit.

(943a)

36. There was no evidence of any work by Osterberg

and Pride relating to the invention of the patent in suit

until long after plaintiff had made his discovery and

invention and had successfully reduced it to practice.

37. The plaintiff’s discovery of the method described in

the patent yielded unexpected results and was an inven-

tion of high order. Although prior patents and publica-

tions were offered by defendant disclosing heating in the

vacuum when coating with metals, the full history of ac-

tivities of the most skilled working in the art over a

period of years shows that such knowledge did not teach

plaintiff’s discovery in connection with applying films of

inorganic salts. It taught nothing to the defendant and

its group of skilled technicians, including defendant’s Dr.

Turner, who had been identified with Dr. Cartwright and

was a leader in this field in his own right.

38. The use of heat when coating with metals did not

make it obvious to those skilled in the art that unexpected

results might be secured using heat when coating with

inorganic salts. There is no general equivalence between

salts and metals.

39. The solution of the problem of lack of hardness in

evaporated coatings as taught in the patent in suit was

not obvious to Cartwright nor to Hewlett nor to the cor-

porations working on the problem, including the defendant,

Eastman Kodak Company, Research Corporation and Na-

tional Research Corporation.

35a

40. The prior patents and publications offered by the

defendant at the trial were substantially the same in dis-

closure as those which were before the Patent Office when

the patent in suit was granted. The Patent Office Examiner

found that the films of inorganic salts, referred to in the

patent in suit, were well known for the purpose, and that

(944a)

the use of heat in the vacuum had been suggested in con-

nection with coating with metals. He found that in the

art of coating with inorganic salt films it was believed that

the films could be hardened by pre-heating and post-bak-

ing. He found that in the art of coating with inorganic

salts it had not been suggested to heat the elements to an

elevated temperature in vacuum and to evaporate the films

thereon while the elevated temperature was maintained

in the vacuum. He found that this method was not taught

by the prior patents and publications, was not obvious,

and the record at the trial fully supports the findings

and decision of the Examiner.

41. The plaintiff’s discovery was of an inventive and

patentable character and was not anticipated by any prior

patents or publications, nor by any prior knowledge or

public use.

42. The plaintiff did not misrepresent the state of the

art to the Patent Office during the pendency of his applica-

tion. He did represent to the Patent Office that outstand-

ing results had been achieved by the method taught and

claimed in his application, particularly that notable suc-

cess had been achieved in work for the Navy during the

war. The whole record shows that the representations

made by the plaintiff were true. The Patent Office Ex-

aminer was not improperly induced to allow the claims

of the patent in suit.

43. The patent defines a new and useful method or proc-

ess residing in the heating of the optical elements in

a

36a

vacuum to an elevated temperature and depositing the in-

organic salt coatings of the metallic fluorides, such as

magnesium fluorides, thereon while they are maintained at

this elevated temperature in vacuum.

(945a)

44. The patent does not claim a product. The claims of

the patent are not too broad and indefinite and adequately

define the invention. The specification of the patent is

adequate to teach those skilled in the art how to practice

the invention. The record shows that the defendant had

no difficulty in interpreting the patent and its claims. The

evidence shows that those skilled in the art well knew

the materials which were recognized as applicable, in mak-

ing these particular coatings, and the claims of the patent

are not unduly broad, being confined to the materials which

were well-known in the art to be applicable for the pur-

pose.

45. Defendant acquired knowledge of the plaintiff’s in-

vention under confidential circumstances, and for a limited

purpose. The defendant became skilled in the operation

of plaintiff’s process prior to the grant of the patent.

This circumstance gave the defendant the advantage of

being able to commence promptly to use the process in his

non-governmental work. This advantage, however, was an

unavoidable incident to the lawful use of the process to

the defendant in performing its government contracts for

the manufacture of optics for the Navy. Defendant’s use

of the process in this non-governmental work commenced

at about the time that the plaintiff wrote the defendant

calling its attention to the fact that he had received a pat-

ent. There was no use by the defendant of the process

prior to the issuance of the patent.

46. Defendant’s commercial process on its non-govern-

mental work which it now uses, infringes the patent in

suit. ;

37a

(946a)

Conclusions of Law

1. The Court has jurisdiction of the subject matter and

of the parties involved in this suit.

2. The patent in suit was properly issued.

3. The plaintiff is the owner of the entire right, title

and interest in and to the patent in suit, subject to a free

license to the United States Government to use it for

Government purposes.

4. The plaintiff’s discovery on which the patent is based

was of an inventive and patentable character and is not

anticipated by the prior art.

5. The patent in suit, including claims 1 through 5, 8

and 9 thereof, is good and valid in law.

6. The plaintiff does not come into court with unclean

hands as alleged by the defendant and is not barred from

relief thereby.

7. The method which defendant has employed in its com-

mercial operations after the issuance of the patent and

prior to the filing of this suit and without permission of

the plaintiff incorporates the invention of the patent and

infringes claims 1 through 5, 8 and 9 thereof.

8. Because there was no use by the defendant of plain-

tiff’s method, which was disclosed to the defendant in

confidence prior to the issuance of the patent, until after

the issuance of the patent, the plaintiff cannot recover on

his claim of unfair competition and unjust enrichment.

9. The usual presumption of validity arising from the

granting of the patent is strengthened by the following:

(a) The defendant appropriated and employed in practice

the plaintiff’s invention in its commercial work rather

38a

(947a)

than using methods of the prior art; (b) Virtually the

whole industry uses the plaintiff’s invention rather than

the methods of the prior art; (c) The plaintiff’s inven-

tion was accepted and successfully used in the armament

program of the Second World War after prior art

methods had been tried and found to be unsuitable; (d)

The record at the trial establishes that the plaintiff’s dis-

covery was overlooked by the most skilled scientists work-

ing in the art for long periods of time on the specific

problem of obtaining hard and durable films, even though

the solution to the problem was under their very eyes,

10. Plaintiff is entitled to an injunction restraining de-

fendant from further infringing the patent and to an ac-

counting for profits and damages resulting from the in-

fringement, together with ordinary taxable costs. The

claim based upon unjust enrichment should be dismissed.

(Signed) HAROLD P. BURKE,

U.S. District Judge.

December 31, 1953.

SUBJECT INDEX

PAGE

wee “Quvations Presented oo. ook. ccc ede vccccen. 1

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NT MONE ME oh nk oN hc aaa a vows ene eee ee 4

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TABLE OF AUTHORITIES CITED

Cold Metal Products Co. v. Newport Steel Corp., 107

ean ey ee OE OS OO os ccc kc 3

Hughes v. Salem Co-Operative Co., Inc., 107 USPQ 39,

8 (D. ©, W. D. Mich. 8. D.: 2065) <5... ccc ccckasc, 3

Modern Art Printing Co. v. Skeels, 123 F. Supp. 426, 432

COANE ay Pak MOONE ais «wns Cada keviek teak 3

Seismograph Service Corp. v. Offshore Raydist, Inc., 107

USPQ 104, 110 (D. C. E. D. La.; 1955) ............. 3

Torok v. Watson, Commissioner, 122 F. Supp. 788, 790

We Rh OU SUE OED Sb io ves cccca deere usm toe.. we 3

Vincent v. Suni-Citrus Products Co., 215 F. 2d 305, 315

AE HAE iwi nen bath dase al 3

STATUTES

Cs IK, nv idns 0s vieaneinlathdadian Moa te 2, 7-10, 14

ED AMD fides s dosiuca ins aaa 2, 7-10, 14

CEE COU wii in SAGs 0 hoon aad kad iw wks 1-5, 7

EMMA 8 0 ch pa Sakecadidecc boccsssbhac 5

R. 8. § 4886, 35 U. 8. C. § 31, 1946 Ed. ................ 8,9