275 F.Supp. 172 (D.N.J. 1967), Civ. 265-64, Radio Corp. of America v. Philco Corp.

Docket Nº:Civ. 265-64
Citation:275 F.Supp. 172
Party Name:Radio Corp. of America v. Philco Corp.
Case Date:July 11, 1967
Court:United States District Courts, 3th Circuit, District of New Jersey
 
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Page 172

275 F.Supp. 172 (D.N.J. 1967)

154 U.S.P.Q. 570

RADIO CORPORATION OF AMERICA, Plaintiff,

v.

PHILCO CORPORATION, Defendant.

Civ. No. 265-64.

United States District Court, D. New Jersey.

July 11, 1967

Page 173

Levy, Levy & Albert, by Philip J. Albert, Trenton, N.J., John Farley, New York City, A. Russinoff, Princeton, N.J., of counsel, for plaintiff.

Katzenbach, Gildea & Rudner, by Samuel Rudner, Trenton, N.J., Thomas M. Ferrill, Jr., Allen V. Hazeltine, Fordyce A. Bothwell, Philadelphia, Pa., of counsel, for defendant.

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OPINION

LANE, District Judge:

This is an action under 35 U.S.C. § 146 to review the decision of the United States Patent Office Board of Patent Interferences in an interference proceeding between Harold B. Law and John W. Tiley, and their respective assignees, Radio Corporation of America (hereinafter 'RCA') and Philco Corporation (hereinafter 'Philco').

Plaintiff, RCA, is a corporation organized and existing under the laws of the State of Delaware, and is licensed to do business in the State of New Jersey. Defendant, Philco, is a corporation organized and existing under the laws of the State of Delaware, and is licensed to do business in the State of New Jersey. Thus, this court has jurisdiction over the parties and venue is proper in this district.

On December 31, 1963, the Patent Office Board of Patent Interferences decided Interference No. 88,472, Tiley (Philco) v. Law (RCA), awarding priority of invention to Tiley. On February 25, 1964, Law appealed to the United States Court of Customs and Patent Appeals, pursuant to 35 U.S.C. § 141. On March 9, 1964, Tiley, pursuant to 35 U.S.C. § 141, filed with the Commissioner of Patents notice of election to have all further proceedings in this case conducted as provided in 35 U.S.C. § 146. On March 25, 1964, plaintiff, the assignee of and party in interest with respect to the Law patent application, brought the present action under 35 U.S.C. § 146 against defendant, the assignee of and party in interest with respect to the Tiley patent application.

Plaintiff seeks an adjudication that the decision of the Board of Patent Interferences was erroneous and that its assignor Law was the original and first inventor of the invention in issue, a method used in the manufacture of color television picture tubes.

In actions under 35 U.S.C. § 146, the issues are tried de novo and the evidence may include that which was introduced in the proceeding before the Patent Office as well as new materials. The specific question for determination, where, as here, the issue decided in the Patent Office was one between the contesting parties as to priority of invention, is whether or not all competent evidence, 'new' and 'old,' offered to the district court carries 'thorough conviction' that the Patent Office erred. Morgan v. Daniels, 153 U.S. 120, 125, 14 S.Ct. 772, 38 L.Ed. 657 (1894); Etten v. Lovell Manufacturing Company, 225 F.2d 844, 848 (3d Cir. 1955), cert. denied, 350 U.S. 966, 76 S.Ct. 435, 100 L.Ed. 839 (1956).

Plaintiff contends generally that the present state of the record in this court carries thorough conviction that the Patent Office erred in awarding priority of invention to Tiley rather than to Law. Plaintiff asserts that the record before the Patent Office was inadequate in that testimony is submitted to the Board only in deposition form and there is no opportunity to evaluate the candor and demeanor of the witnesses; that the documentary evidence presented to the Board with respect to the history of Philco's work in 1950 and 1951 consisted largely of documents selected by Philco itself from the Philco files; and that as a result of the broader discovery available in the district court other important documents from Philco's files bearing on the issues became available to plaintiff RCA for the first time subsequent to the Patent Office decision. The new evidence introduced here includes not only engineering records, but also testimony by expert witnesses at the trial who explained the statements contained in those records relating to various technical problems. In some instances the expert witnesses had themselves done or supervised work in the field of color television in the time period here of interest, and gave valuable and objective testimony as to this. The new evidence also includes testimony by deposition of a key witness, Meier Sadowsky, related to the issue of whether Tiley was an original independent inventor or whether he derived

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the invention from Law through Sadowsky.

Defendant Philco contends that the record before this court does not carry thorough conviction that the Patent Office erred. It asserts that the additional evidence presented to this court is merely cumulative with that which was before the Board; that much of it consists of self-serving opinion evidence devoid of merit, and that some of it is barred since it relates to an issue not raised below. Stated positively, defendant Philco contends that the evidence in this case establishes that Tiley was first to conceive the invention, and was diligent from the conception not only to the demonstration in April, 1951, but also to his constructive reduction to practice on September 26, 1951; and that Tiley was first to reduce the invention to practice. Additionally, Philco contends that it is entitled to an award of priority on the ground that plaintiff's patent application here involved was improperly converted from a joint Law-Rosenthal application to a sole Law application, since no justification for such conversion was established as required by 35 U.S.C. § 116.

GENERAL BACKGROUND

A number of corporations in the electronics industry had, immediately after World War II, participated in the development of black-and-white television, and in the latter part of 1946 commercial black-and-white sets were placed on the market. Increased interest was then shown and sustained effort expended in attempts to develop color television techniques, and in 1949 the Federal Communications Commission asked the electronics industry to propose standards for the development of color television in America.

The Columbia Broadcasting Company, one of the proponents of a color television system, devised a method involving the use of an ordinary black-and-white tube, producing a white picture, with a moving disk mounted in front of the white picture. The moving disk was fitted with red, green and blue filters, and with this combination Columbia was able to produce a color picture. The company attempted to make its color system compatible with a black-and-white system for transmission, but found the color picture it produced could not be received by an unmodified black-and-white receiver. Nor could a transmission of a conventional black-and-white picture be received by its color receiver without some modification. Thus, the Columbia system required two standards.

At an early date, RCA did demonstrate a completely engineered color television system in which electronic tubes were used. However, this system called for the use of three conventional cathoderay tubes, one of which had a green phosphor, one a blue, and one a red, and they were combined with mirrors so that the viewer gained the impression of seeing the three in combination. This system was bulky, expensive, and somewhat impractical, and RCA felt that production of a single multicolor picture tube was necessary in order to gain Federal Communications Commission approval.

Thus, RCA, in September, 1949, inaugurated a crash program to develop a single color picture tube for use in demonstrating its system to the authorities in Washington, and Dr. Edward W. Herold headed this program. RCA undertook five different projects, that is, five different ways of producing a color picture. Two of them involved a so-called shadow-mask principle, and it was these two that were successfully demonstrated to the Federal Communications Commission on April 6, 1950. RCA also held a much-publicized demonstration at that time for the representatives of the television industry. These demonstrations included the broadcasting of live color television programs which were received on the RCA color television demonstration sets, and also received on black-and-white television sets located throughout the Washington area. As a result of these demonstrations the RCA principle of color and black-and-white transmission and reception compatability was eventually approved by the Federal Communications

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Commission. Philco did not participate in this early Federal Communications

Shadow-mask Tubes Shadow-mask Tubes

Shadow-mask tubes, the type plaintiff RCA used in its demonstrations in Washington in early 1950, are now in wide use in the color television industry. A shadow-mask tube includes, at the viewing end of the tube, a glass viewing screen having on its inside surface a pattern of many small, closely-spaced phosphor dots which emit colored light when struck by a beam of electrons. These dots are arranged in groups, each group including three phosphor dots ('triplets'), which respectively emit red, blue and green light. There is an apertured mask includes many holes, there being the tube, near the viewing screen, which mask includes many holds, there being one mask hole for each group of three phosphor dots. In this type of tube three electron beams scan the mask and pass through the mask holes toward the phosphor screen. The three beams approach the mask at different angles, and, after passing through a mask hole, each beam can strike only the dot of the particular color phosphor (red, blue or green) which is allotted to that beam.

The mask used in RCA's tubes in 1950 was in the form of a perforated flat metal plate maintained by being held...

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