University of Illinois Foundation v. Winegard Company

• Decision Date: 18 July 1967
• Docket Number: Civ. No. 3-695-D.
• Citation: 271 F. Supp. 412
• Parties: UNIVERSITY OF ILLINOIS FOUNDATION, Plaintiff, v. WINEGARD COMPANY, Defendant.
• Court: U.S. District Court — Southern District of Iowa

271 F. Supp. 412

UNIVERSITY OF ILLINOIS FOUNDATION, Plaintiff, v. WINEGARD COMPANY, Defendant.

Civ. No. 3-695-D.

United States District Court S. D. Iowa, Davenport Division.

June 23, 1967.

As Amended July 18, 1967.

Basil P. Mann, William A. Marshall, Chicago, Ill., and David J. Shor, Davenport, Iowa, for plaintiff.

Keith J. Kulie, Donald B. Southard, Chicago, Ill., and Edward W. Dailey, Burlington, Iowa, for defendant.

MEMORANDUM OPINION

STEPHENSON, Chief Judge.

This action was brought by the plaintiff University of Illinois Foundation, the owner by assignment of U. S. Patent 3,210,767, issued to Dwight E. Isbell on October 5, 1965 (hereinafter referred to as the Isbell Patent and attached hereto as Appendix A), against the defendant Winegard Company wherein the plaintiff seeks a finding that said patent has been and is being infringed by the defendant. In its answer the defendant alleges, inter alia, invalidity of the patent on the grounds that the invention was disclosed more than one year prior to the date of the application for the patent and that, at the time made, the invention was obvious to one skilled in the art. Jurisdiction is established by virtue of 35 U.S.C. § 281 and 28 U.S.C. § 1338.

Inasmuch as the defendant alleges invalidity of the patent as a defense, the Court must determine initially whether or not the Isbell patent is valid. General Mills, Inc. v. Pillsbury Co., 378 F.2d 666 (8th Cir., 1967); American Infra-Red Radiant Co. v. Lambert Indus., Inc., 360 F.2d 977, 983-984 (8th Cir., 1966). Of course, a patent, from the fact of its issuance is presumed to be valid. 35 U.S.C. § 282; Radio Corporation of America v. Radio Engineering Laboratories, Inc., 293 U.S. 1, 7-8, 55 S.Ct. 928, 79 L.Ed. 163 (1934); L & A Products, Inc. v. Britt Tech. Corp., 365 F.2d 83, 86 (8th Cir., 1966); American Infra-Red Radiant Co. v. Lambert Indus., Inc., supra, 360 F.2d at 988-989. However, this presumption of validity is weakened when, as in this case, there are prior art references or alleged disclosures of the patent before the Court that were not considered by the patent office during the prosecution of the application for the patent. Imperial Stone Cutters, Inc. v. Schwartz, 370 F.2d 425, 429 (8th Cir., 1966); American Infra-Red Radiant Co. v. Lambert Indus., Inc., supra, 360 F.2d at 989; Greening Nursery Co. v. J & R Tool & Mfg. Co., 252 F.Supp. 117, 139 (S.D.Iowa, 1966), aff'd, 376 F.2d 738 (8th Cir., 1967).

There are three separate conditions precedent to patent validity. They are: Novelty, utility, and nonobviousness. 35 U.S.C. §§ 101-103; Graham v. John Deere Co., 383 U.S. 1, 12, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); United States v. Adams, 383 U.S. 39, 48, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966); L & A Products, Inc. v. Britt Tech. Corp., supra, 365 F.2d at 85. In this case the defendant relies on lack of novelty (Title 35 U.S.C. Section 102) and obviousness (Section 103) as barring patentability. It is the opinion of the Court that the issue of obviousness is dispositive of this case. Therefore, that issue will be first considered.

While the ultimate question of patent validity is one of law, the determination of the question of obviousness lends itself to several basic factual inquiries. Graham v. John Deere Co., supra, 383 U.S. at 17, 86 S.Ct. 684; L & A Products, Inc. v. Britt Tech. Corp., supra, 365 F.2d at 86. In addition to setting out the scope of the patent in suit, the scope and content of the prior art must be defined so that a determination can be made as to whether the differences between the patent in suit and the pertinent prior art would have been obvious to one ordinarily skilled in the art. If such differences as may exist would have been obvious to a person ordinarily skilled in the art, the obviousness test of 35 U.S.C. § 103 has not been met and the patent will be invalid. Graham v. John Deere Co., supra, 383 U.S. at 37, 86 S.Ct. 684, General Mills, Inc. v. Pillsbury Co., supra.

The Patent in Suit

The Isbell Patent is entitled "Frequency Independent Unidirectional Antennas" and relates to antennas designed for the transmission and reception of electromagnetic radio frequency signals. These signals are used for the broadcasting of many types of communications including radio and television signals. The Isbell antenna consists of a plurality of elements called "dipoles"¹ which are arranged in relation to each other and connected to each other in a particular manner. Generally, as stated in the patent specification, "the antennas of the invention are coplanar dipole arrays consisting of a number of dipoles arranged in side-by-side relationship in a plane, the length and the spacing between successive dipoles varying according to a definite mathematical formula, each of the dipoles being fed by a common feeder (transmission line) * * *."² According to the patent specification,

The feeder or transmission line consists of two conductors, one of which is connected to the inner end of one-half of each dipole, the other being connected

The lengths of the dipoles and the spacing between dipoles are related by a constant scale factor defined by the following equations:

where is a constant having a value less than 1, Ln is the length of any intermediate dipole in the array, L(n+1) is the length of the adjacent smaller dipole, ? Sn is the spacing between the dipole having the length Ln and the adjacent larger dipole, and ? S(n+1) is the spacing between the dipole having the length Ln and the adjacent smaller dipole.³ to the inner end of the other half of the dipole, and transposed between connections of successive dipoles in such a manner that each conductor is connected alternately to the left and right halves of successive dipoles. (See Appendix A, Fig. 1.)

Antennas designed in accordance with the patent specifications are claimed to have unidirectional radiation patterns and high quality performance which are, over a wide band of frequencies, essentially independent of the frequency of the electromagnetic radio waves being transmitted or received. An antenna with such characteristics is, of course, desirable when the reception of many different frequencies is required as one such antenna may be used in place of many antennas which are each capable of receiving a limited number of frequencies. Since VHF television signals are broadcast over a range of frequencies of 54 megacycles/second to 216 megacycles/second,⁴ an antenna capable of receiving high quality signals with uniform performance characteristics in that range of frequencies would be of commercial utility. This is particularly true in respect to the reception of color television signals where the minimum standards of performance are higher than those required for satisfactory black and white television reception.

There are fifteen claims in the Isbell patent. See Appendix A. All of the claims except numbers 6, 7 and 8 are claimed to be infringed by one or more of twenty-two models of defendant's antennas which are designed for the reception of television signals.⁵ Specifically, all twenty-two models are alleged to be literal infringements of claims 14 and 15 and also within the inventive concept of claims 1-5 and 9-13. In addition, one of the antennas, the chromatel CT-100, is alleged to be a literal infringement of claims 1, 2, 9, 10, 11, and 12. It should be noted here that while the portions of the antennas which are charged as infringing are designed solely for the reception of VHF television signals, the Isbell antenna is not so limited. It is designed both as a receiving antenna and a transmitting antenna for use in an unlimited range of frequencies. For example, the specification indicates that the antenna has very high performance characteristics over as high a range as 1100 to 1800 mc/sec.⁶

Prior Art

Four prior patents are cited in the patent as having been considered by the patent examiners. One of these patents, five other U. S. patents not referred to by the examiners, an article published on March 31, 1958 and three antennas in use prior to 1959 are among the references relied upon by the defendant as revealing the prior art at the time of the invention. An examination of some of these references will be helpful in defining the state of the prior art on May 3, 1960, the date of the filing of the application for the patent.

The Katzin patent (U. S. Patent No. 2,192,532, the first page of which is attached hereto as Appendix B) cited by the patent office reveals an antenna consisting of an array of dipole elements of different lengths arranged in a side-by-side relationship in a plane. While some of the illustrated embodiments of the Katzin invention show antennas having several elements of one length arranged parallel to several elements of another length, one illustrated embodiment (Figure 3c, Appendix B) shows an array described in claim 7 of the patent as being "a plurality of aerial elements, all of differing length, continuously tapering in length from one end of said antenna to the other * * *."⁷ The patent also suggests, in claim 11 thereof, that the spacing between the shorter elements may be less than that between the longer elements.⁸ The teaching of the Katzin patent is that if elements, or groups of elements, of differing lengths are combined into one array, each of the elements, or groups of elements, "will respond most efficiently to its corresponding band of frequencies, so that the combination of two or more such groups * * * will give the result of a high response for a wider frequency band."⁹

One of the antennas cited as prior art by the defendant is the Channel Master "K. O." antenna model 1023, produced and marketed by the Channel Master Corporation at Ellenville, N. Y. between September 1954 and December 1958. A schematic diagram of this antenna, Exhibit DX-G-16, is attached hereto as Appendix C. This antenna is an array of folded dipoles,¹⁰ each of a different length, arranged...