Talk:Philips Electric Co. v. Thermal Industries, Inc., 450 F.2d 1164 (1971)

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Courtney

The alleged novelty of the Mayers process, therefore, lies in its utilization, through rapid cooling, of the internal stresses which the prior art had tried to avoid by annealing. 7

Appellant's preliminary contentions on this appeal are: (A) the trial judge erred when he admitted into evidence the microfilm of the Lorenze foreign patent application as a prior "printed publication" within the meaning of 35 U.S.C. Sec. 102(a); and (B) the trial judge erred in concluding that the invention of the patent in suit would have been obvious to those skilled in the art in 1951 from a combination of the Lorenze foreign patent application and the German patent. 22

Section 102 of 35 U.S.C. provides: 23

A person shall be entitled to a patent unless-(a) the invention was * * described in a printed publication in this or a foreign country, before the invention thereof by the applicant. 24

The traditional process of "printing" is no longer the only process synonymous with "publication." The emphasis, therefore, should be public dissemination of the document, and its availability and accessibility to persons skilled in the subject matter or art. 27

The field is rapidly undergoing change and improvement. To restrict our interpretation of Section 102(a)'s "printed" publication requirement solely to the traditional printing press would ignore the realities of the scientific and technological period in which we live and the underlying rationale of Section 102. We hold, therefore, that the term "printed" as used in Section 102 can include documents duplicated by modern methods and techniques, including the now well established process of microfilming. Whether or not an individual microfilm is a "printed" publication within the meaning of the statute is a question of fact which ought to be determined by the application of criteria consonant with modern day methods of printing, duplicating and disseminating documents. 28

The trial court found that all of the individual elements of the Mayers process were contained in the prior art.

The question of obviousness is highly dependent upon the skill of the ordinary worker in the art. If the incremental knowledge added by the patent to the prior art is a result of the application of mere mechanical skill by one familiar with the art, then the standard of invention has not been met.

Although the appellant makes no allusions to it, we note an adverse consideration in the history of this patent at the patent office. Although the alleged invention was conceived as early as 1950, the ultimate patent was not issued until May 22, 1962, after a long and tortuous course in the patent office. It is another illustration of what Judge Learned Hand has referred to as the "ant like persistence of solicitors" which overcomes "the patience of examiners, and there is apparently always but one outcome." See Lyon v. Boh, 1 F.2d 48, 50 (S.D.N.Y. 1924).

Maura

For a prior publication to be sufficient to defeat a patent it must exhibit a substantial representation of the invention in such full, clear, and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills.

It seems to us that the rationale of I. C. E. Corp. v. Armco Steel is sound. It finds support in modern copymaking techniques and the widespread commercial, industrial and educational use of microfilm, as well as its use in our libraries and data storage banks. Since the decision in Tenney, there have been revolutionary developments in techniques for reproduction, printing and dissemination of documents and data. The traditional process of "printing" is no longer the only process synonymous with "publication." The emphasis, therefore, should be public dissemination of the document, and its availability and accessibility to persons skilled in the subject matter or art. 27 The field is rapidly undergoing change and improvement. To restrict our interpretation of Section 102(a)'s "printed" publication requirement solely to the traditional printing press would ignore the realities of the scientific and technological period in which we live and the underlying rationale of Section 102. We hold, therefore, that the term "printed" as used in Section 102 can include documents duplicated by modern methods and techniques, including the now well established process of microfilming. Whether or not an individual microfilm is a "printed" publication within the meaning of the statute is a question of fact which ought to bedetermined by the application of criteria consonant with modern day methods of printing, duplicating and disseminating documents. 28

To be a 'publication' under the statute, a document must, among other things, be accessible to the public. * * * The public, for purposes of the statute, constitutes that class of persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.

Justice Clark, in the first major Supreme Court analysis of the 1952 Patent Act, stated in Graham: 38 While the ultimate question of patent validity is one of law, [Great] A. & P. Tea Co. v. Supermarket [Equipment] Corp., supra [340 U.S. 147], at 155 [71 S.Ct. 127, 95 L.Ed. 162], the Sec. 103 condition, * * * lends itself to several basic factual inquiries. Under Sec. 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. 39

35 U.S.C. Sec. 102(a) 7 "[T]he term 'printed publication' as contemplated by Congress in 35 U.S.C. 102 can include a document printed, reproduced or duplicated by modern day methods, including microfilming, upon a satisfactory showing that such document has been disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate it and recognize and comprehend therefrom the essentials of the claimed invention without need of further research or experimentation." 250 F.Supp. at 743 8

Kevin

This is an appeal from a judgment of the District Court of New Jersey in a patent infringement proceeding brought by Philips Electronic and Pharmaceutical Industries Corp. (PEPI) plaintiff-appellant against defendants, Glasseal Products, Inc. and Thermal and Electronics Industries, Inc. (T & E).1 Plaintiff charged the defendants with infringement of PEPI's United States Patent No. 3,035,372 entitled "Method for Making A Glass to Metal Seal" (Mayers Patent). He sought a preliminary and final injunction against further infringement as well as compensation for damages. The defendant-appellee, T & E, denied infringement and offered evidence to show that the Mayers patent was invalid because the teachings it contained had been anticipated by the prior art, or were obvious to one skilled in the art. The cases against Glasseal2 and T & E were consolidated, and tried. In his opinion, the trial judge held that patent no. 3,035,372 was invalid because of "obviousness" under 35 U.S.C. Sec. 103. 311 F.Supp. 17 (D.N.J.1970). PEPI has appealed from this judgment.

In finding the Mayers patent invalid because of "obviousness," the trial court made an extensive analysis of the state of the art in the glass seal making industry prior to the alleged Mayers invention. T & E introduced evidence of four processes antedating the Mayers patent which, it asserted, either showed the Mayers process to be in prior use or anticipated in such a way as to make it invalid for "obviousness." Two of these processes, the Fuscite and RCA processes, were found by the trial court to be insufficient to meet the heavy burden of proof necessary to establishing prior use.4 It is necessary to briefly discuss the other two of these processes in order to adequately deal with the questions raised on this appeal.

II. THE PRIOR ART 9 A. The German Patent. 10 On March 11, 1937, the German Patent Office issued patent no. 734,115. The German patent disclosed a three component type of compression seal, utilizing materials falling within the coefficient thermal expansion (CTE) range of the Mayers patent. 11 The trial judge found that the German patent anticipated appellant's claims with respect to the compressive stresses caused by mismatching CTE's. But, in the court's opinion, it did not anticipate the creation of tensile stresses within the glass member caused by rapid cooling. For this reason, the trial court concluded that, standing alone, the German patent did not anticipate the Mayers patent. B. The Lorenze Patent Application.5 12 The Lorenze patent application, dated November 3, 1941, was introduced by the appellee as an invention "described in a printed publication in this or a foreign country."6 The first claim of the Lorenze application states: 13 (1) [M]ethod of producing gas-tight metal-to-glass seals which are insensitive to temperature and in which compressive stresses are produced in the glass, characterized by the fact that the metal surrounds the glass and the mass of glass is rapidly cooled, immediately after completion of the melting process, by additional coolants from a temperature which lies above the transformation point. 14

For a prior publication to be sufficient to defeat a patent it must exhibit a substantial representation of the invention in such full, clear, and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills. Cummins Engine Co. v. General Motors Corp., 299 F.Supp. 59, 91 (D.Md.1969). Using this test, the trial court found that while the application clearly indicated a rapid cooling procedure in the making of seals, it did not provide diagrams, discuss the specific materials to be used or the exact nature of the seals. Nor was there an explanation of the importance of the selection of CTE in order to obtain the proper compressive stresses. For these reasons, the trial court concluded that the Lorenze application did not, standing alone, anticipate the Mayers patent. 15 For a prior publication to be sufficient to defeat a patent it must exhibit a substantial representation of the invention in such full, clear, and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills. Cummins Engine Co. v. General Motors Corp., 299 F.Supp. 59, 91 (D.Md.1969). Using this test, the trial court found that while the application clearly indicated a rapid cooling procedure in the making of seals, it did not provide diagrams, discuss the specific materials to be used or the exact nature of the seals. Nor was there an explanation of the importance of the selection of CTE in order to obtain the proper compressive stresses. For these reasons, the trial court concluded that the Lorenze application did not, standing alone, anticipate the Mayers patent. 15

In summary, the prior art reveals knowledge of three component glass-to-metal compression seals with the same CTE's as Mayers [sic] process in one reference and rapid cooling of gas tight metal-to-glass compressive seals in a separate reference. The prior art reveals all of the important elements of Mayers [sic] process. 17 18

  • *

19 The two references viewed together would seem to suggest a combination of the German compression elements with the Lorenze rapid cooling process to produce a glass-to-metal seal. Accepting this reasoning, the Mayers patent would be invalid under 35 U.S.C. Sec. 103. 20


Appellant's preliminary contentions on this appeal are: (A) the trial judge erred when he admitted into evidence the microfilm of the Lorenze foreign patent application as a prior "printed publication" within the meaning of 35 U.S.C. Sec. 102(a); and (B) the trial judge erred in concluding that the invention of the patent in suit would have been obvious to those skilled in the art in 1951 from a combination of the Lorenze foreign patent application and the German patent. 22 A. The Admission of the Lorenze Microfilm.

A person shall be entitled to a patent unless-(a) the invention was * * described in a printed publication in this or a foreign country, before the invention thereof by the applicant. 24 Whether or not a microfilm qualifies as a "printed publication" is not a new legal issue. In Application of Tenney, 254 F.2d 619, 45 CCPA 894 (1958), the court found that the microfilm in question, also a German patent application, did not constitute a "printed publication." After a long treatment of the history of the "printed" publication requirement, Tenney found the essence of the requirement to be the "probability" of public knowledge-not its actuality-once it has been established that the item has been both printed and published. Without proof of something more, it held that the mere existence of a microfilm copy did not alone create any presumption of public knowledge so as to constitute it a "printed publication" within the contemplation of Section 102(b). It also attached significance to the fact that the single extant microfilm copy had been misindexed. The concurring opinions, however, give considerable illumination to the majority decision because they disclose that under certain circumstances a microfilm can be held to be a printed document within the statutory meaning. Judge Worley believed that other factors were entitled to consideration, including not only the physical process utilized in the production or reproduction, "but also availability, accessibility, dissemination and, perhaps in some cases, even intent." 254 F.2d at 627. Judge Rich's concurrence, written in a similar vein cautioned that "no rigid rule about microfilm should be deduced, however, from our decision." 254 F.2d at 629. 25

Thus, a proponent of a microfilm as a "printed publication" under the statute should produce sufficient proof of its dissemination or that it has otherwise been made available and accessible to persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents. He should be able to make a satisfactory showing that a person interested in and ordinarily skilled in the art can locate it, and understand the essentials of the claimed invention without further research or experimentation. I. C. E. Corp. v. Armco, supra, 250 F.Supp. at 743. 31

On the basis of the foregoing, the trial court found that the Lorenze application, as microfilmed and indexed, was available and accessible, with the exercise of reasonable diligence, to persons ordinarily skilled in the art. It held the document to be a printed publication under the statute, constituting a part of the prior art in the field. 33

This evidence is sufficient to support a finding that the information contained in the microfilm had been disseminated, and was available and accessible to a person interested and ordinarily skilled in the art.10 Although the patent was indexed under the subheading "Minerals and Mineral Products," the trial judge noted that all of the other patent applications listed on the same index page pertained to devices or processes involving glass or glass metal combinations. His conclusion that the microfilm copy of the Lorenze application was not misfiled supports his finding that it was available to persons interested and could be located by persons ordinarily skilled in the subject matter with the exercise of reasonable diligence. 35 Upon the basis of the record before us, we are unable to state that the finding of the trial court that the Lorenze application was a printed publication within the meaning of Section 102(a) is "clearly erroneous"

The trial court, based on an analysis of the prior art in the glass seal making industry, concluded that the Mayers patent failed to meet the nonobviousness criteria of Section 103.11 Appellant contends that this finding was erroneous because: first, the Mayers process was not obvious to those skilled in the art in 1951; and secondly, the trial court failed to consider important secondary considerations which have been suggested as relevant inquiries in determining obviousness. Graham v. John Deere Co., 383 U.S. 1, at 17-18, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). 37

Assuming arguendo that this technique does maximize the stress, this distinction between Lorenze's "rapid cooling" and Mayers' is addressed only to the amount of stress induced. The critical question, however, in determining the validity of the Mayers patent is not the amount of any tensile stress that is induced but whether the technique of inducing any tensile strength was taught by the prior art. 44

(b) The Difference between the Prior Art and Mayers Patent 45 The trial court found that all of the individual elements of the Mayers process were contained in the prior art. It correctly concluded that this fact, in itself, did not invalidate the Mayers patent unless the combination of these elements would have been obvious to the ordinary skilled worker in the art. See United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966). 46 (c) Level of Skill in the Art 47

The question of obviousness is highly dependent upon the skill of the ordinary worker in the art. If the incremental knowledge added by the patent to the prior art is a result of the application of mere mechanical skill by one familiar with the art, then the standard of invention has not been met. The Supreme Court formulated a general condition of patentability in 1851 in Hotchkiss v. Greenwood,12 holding: 48 [U]nless more ingenuity and skill * * * were required * * * than were possessed by ordinary mechanic, acquainted with the business, there was an absence of that degree of skill and ingenuity which constitute essential elements of every invention. In other words, the improvement is the work of the skilful mechanic, not that of the inventor. 49

he trial court having made the factual inquiries prescribed by Graham, then turned to the final question of obviousness and concluded that the combination of the three component mismatched CTE elements of the German Patent with the rapid cooling procedure of the Lorenze application would have been obvious to a person having ordinary skill in the art.13 The findings of fact made by the district court and the conclusion that the Mayers process would have been obvious to one skilled in the art are supported by the evidence. In reaching this determination, we "give considerable weight to its [district court's] factual determinations underlying the decision of obviousness even though that issue is one of law which we shall rule ourselves. * * * Findings of fact in patent cases are not to be set aside unless clearly erroneous under Federal Rule of Civil Procedure 52(a)." Ralston Purina Co. v. General Foods Corp., 442 F.2d 389, at 391 (8th Cir. 1971). 52

Appellant points enthusiastically to the commercial success Mayers-type compression glass-to-metal seals have enjoyed with the use of the patented method, their importance to the electronics industry, national defense and the space effort. Courts have given measured weight to "commercial success" as a secondary consideration in an effort to determine the absence of obviousness. Frank W. Egan & Co. v. Modern Plastic Machinery Corp., 387 F.2d 319 (3rd Cir. 1967). 55

PEPI also asserts that there had been a long felt but unfilled need in the industry for stronger seals. In support of this contention PEPI cites a list of patents granted in the art prior to the Mayers application. This list allegedly shows the number of unsuccessful attempts to produce a stronger seal. The evidence adduced at trial, however, indicates that the industry was a developing one and that the skill in the art was producing increasingly better seals. By the time Mayers process was developed, the record indicates that stronger seals were being produced by several other methods, i. e., the RCA and Fuscite processes. This evidence, although not sufficient to prove a prior use, indicates an advanced state of the art wherein stronger seals were being produced to meet the demand. 58 There is no substance to the appellant's argument of commercial acquiescence in the patent: that is, a widespread adoption by the industry after introduction of the patented solution. Appellant emphasizes that eleven manufacturers of glass to metal seals have accepted licenses under the patent to date. But it is quite possible that these licensees found acquiescence less burdensome and costly than the expense and problems involved in patent litigation. See Preuss v. General Electric Co., 392 F.2d 29 (2nd Cir. 1968). The breakdown of royalties earned from each licensee up to and including the first quarter of 1968 aggregates less than $200,000.00.16 There do not appear to be any major companies in this group. RCA is not included. Infringement suits have not been commenced against General Electric Company, Texas Instruments or IT&T. 59 Although the appellant makes no allusions to it, we note an adverse consideration in the history of this patent at the patent office. Although the alleged invention was conceived as early as 1950, the ultimate patent was not issued until May 22, 1962, after a long and tortuous course in the patent office. It is another illustration of what Judge Learned Hand has referred to as the "ant like persistence of solicitors" which overcomes "the patience of examiners, and there is apparently always but one outcome." See Lyon v. Boh, 1 F.2d 48, 50 (S.D.N.Y. 1924).

Finally, the appellant contends proper consideration was not given to the finding of the Massachusetts district court (Philips Electronic & Pharm. Industries Corp. v. Thermal Electronic Prod., 256 F.Supp. 705 (D.Mass.1966)) which upheld the validity of the Mayers patent or to the finding of the patent office which issued the patent in the first instance. It argues that reversible error was committed in holding that the presumption of validity stemming from the patent office had been overcome and in refusing to follow the Massachusetts case. The trial court concluded that since neither the German patent per se nor the Lorenze patent per se was before the patent office or the Massachusetts court, the presumption had been overcome. The appellant contends, however that in substance the same art was before the patent office and the Massachusetts court. 61 Where relevant prior art is not considered by the patent office, the presumption of validity of the patent is weakened or overcome. Ralston Purina Co. v. General Foods Corp. 442 F.2d 389 (8th Cir. 1971); Dole Refrigerating Co. v. Amerio Contact Plate Freezers, 265 F.2d 627 (3rd Cir. 1959). An analysis of this record reveals that in substance the same art was not before the patent office or the Massachusetts court. 62

In holding a thesis written by a patentee and filed in a college library available to students and to other libraries having exchange arrangement with the college to be in the "prior art," the court in Hamilton Laboratories v. Massengill, 111 F.2d 584, at 585 (6th Cir. 1940) found that the thesis constituted a publication within the terms of the statute 11 "A patent may not be obtained though the invention is not identically disclosed or described as set forth in Section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made." 35 U.S.C. Sec. 103 12 Section 103, added to the Patent Code in 1952, as an additional test of patent validity, "was intended merely as a codification of judicial precedents embracing the Hotchkiss condition, with congressional direction that inquiries into the obviousness of the subject matter sought to be patented are a prerequisite to patentability." Graham v. John Deere Co., 383 U.S., at 17, 86 S.Ct. at 693 13