Ling-Temco-Vought, Inc. v. Kollsman Instrument Corp.

Decision Date20 January 1967
Docket NumberDocket 30584.,No. 179,179
PartiesLING-TEMCO-VOUGHT, INC., Plaintiff-Appellant, v. KOLLSMAN INSTRUMENT CORPORATION, Defendant-Appellee.
CourtU.S. Court of Appeals — Second Circuit

Willis H. Taylor, Jr., New York City (Keith E. Mullenger and Pennie, Edmonds, Morton, Taylor & Adams, New York City, on the brief), for plaintiff-appellant.

Sidney G. Faber, New York City (Jerome M. Berliner and Ostrolenk, Faber, Gerb & Soffen, New York City, on the brief), for defendant-appellee.

Before LUMBARD, Chief Judge, and MEDINA and KAUFMAN, Circuit Judges.

MEDINA, Circuit Judge:

In this case Judge Rosling, in the Eastern District of New York, on a voluminous record and after a 19-day trial, held what we shall call the Fenske patent on a "Data Plotting and Indicating Device" invalid and not infringed by the accused devices of Kollsman Instrument Corporation. Ling-Temco-Vought, Inc., the assignee of United States Patent No. 2,859,659, appeals. Judge Rosling's lengthy and reasoned opinion is reported at 149 U.S.P.Q. 168.

In the early 1950's it had become apparent that space age velocities of attacking or defending aircraft and the possibility of a swarm of missiles had rendered or would soon render obsolete the method of tracing the paths and locations of such aircraft and missiles by hand on a large plastic or other transparent screen. This method had many disadvantages, not the least of which was writing backwards with a grease pencil on the reverse side of the transparent screen, the time delay in recording the data transmitted by radar and otherwise, and the number of persons necessary to perform the operation of this system. The 1952 Hayek Patent No. 2,584,267 was never manufactured and there was no evidence that it was workable, but it did involve the conception of recording a trace of the incoming data on an opaque plate covered by removable material and transmitting the data to a screen by use of a projector. There is no doubt whatever that the development of the art in the Fenske patent solved the difficulties inherent in the Hayek device and provided a simple and relatively inexpensive method of projecting a clear image of the paths of a number of airplanes or missiles whilst at the same time preserving a permanent record. While the number and variety of patents cited as constituting the prior art is bewildering, the critical and decisive central issue in the case is whether, according to the provisions of 35 U.S.C., Section 103, as interpreted by the decision of the Supreme Court in Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed. 545, handed down on February 21, 1966, after Judge Rosling's disposition of this case, the solution of the problem, so vital to the defense of the United States, by Fenske was "obvious * * * to a person having ordinary skill in the art" in the light of Hayek. Applying the teaching of Graham we have reached the conclusion that Fenske's solution of the problem was not "obvious" within the meaning of the statute, and we reverse the finding of invalidity. It is fortunate, however, that Judge Rosling followed the approved procedure of deciding the question of alleged infringement. We agree with his reasoning that there was no infringement. As to one of the accused devices of Kollsman, which had proved to be a failure and was abandoned, Judge Rosling applied the de minimis doctrine. To the other accused device, because of the narrow limitation of the Fenske claims by the Patent Office, Judge Rosling applied the rule of file wrapper estoppel. We affirm these rulings of noninfringement.

I. The Prior Art.

The problem which the Fenske patent and the prior art sought to solve was the visual presentation of the dynamic function of two coordinates, time and space, from data obtained from an external source, usually radar. Before the development of appellant's device, there were only two operative methods of displaying such data. The earliest method employed an ink pen to draw a line along graph paper with either the paper or the pen or both being moved in response to the data received. Devices of this character were wholly inadequate for reasons that need no elaboration. The other method is the one described above, that is to say recording by individuals by writing backwards with a grease pencil on the reverse side of a large transparent screen.

The basic patent on which the Fenske patent operates is Hayek, No. 2,584,267 (1952). Apparently this invention remained a paper patent but even an unworkable patent is a part of the prior art. The Hayek device operated on the same principle as a slide projector. One such projector cast a background on the viewing screen, for example, the outline of the United States. Another projector was supposed to be used for each of the objects to be tracked. The slide in the projector was covered with an opaque but removable material and the path of the object was inscribed on the slide by a stylus. As the stylus moved across the slide, the line was inscribed by the removal of the coating and was cast on to the screen by the light source of the projector. The difficulty with the Hayek device was in the mounting which was used as a stylus carrier. Hayek visualized an opaque armature, similar to a phonograph arm and needle. But this armature, when inscribing, by pecking after the manner of a woodpecker, would be interposed between the slide and the light source and the shadow it cast would obliterate the trace on the viewing screen. Since the function which this device was to serve required that the plotted line both be continually evolved and always wholly in view, this defect made the Hayek device unworkable.

The Fenske patent solved this problem by abandoning the armature altogether. Instead, the stylus was mounted on a transparent plate such as glass or plastic which was larger than the slide so that the edges of the glass plate would not appear on the screen. This entire transparent plate placed in a position parallel to the plate covered with opaque removable material then became the carrier and did not obstruct the beam of light in the projector when it was inscribing.

In addition to Hayek, appellee relies on several additional supplemental references which it claims when taken together with Hayek fully anticipated the Fenske patent. The principal such patent was Henry, No. 1,119,597 (1914). The Henry patent was said to cover a slide which had upon it a single dot. This dot, when the slide was inserted in a projector, would appear on a background and when the slide was moved, the dot could be used as a pointer. The invention which the Henry patent actually covered was the means by which the slide could be moved and thus there is some doubt that it should be given any consideration whatever as a part of the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 35, 86 S.Ct. 684, 15 L.Ed. 2d 744. Reading Henry for all that it is worth only shows a method of projecting superimposed images with one slide not completely interfering with the image produced from the other slide.

The Massinger patent, No. 2,508,413 (1950), concerns a method of marking a slide while it is under a microscope. Massinger placed a dome which might, but need not, be transparent under the slide and mounted a marker on the top of the dome. As a marker, Massinger suggested the letter "o" from a rubber stamp. The dome could then be moved about and raised to mark the slide.

A further reference relied upon by Kollsman was an unpatented improvement made by it on one of the old pen and paper indicators. One type of such device employed a continuous roll of paper which passed below a rectangular opening in the face of the instrument. The pen was attached to a metal plate which in turn was attached to the instrument at the top and bottom of the opening and moved horizontally. This plate wholly obstructed the view of the line being drawn. To alleviate this problem, Kollsman made a plate partially out of glass.

Kollsman cites other patents of more or less relevance to the question at hand but we think it is not necessary to consider them in any detail because the parties seem to agree that the references given above are controlling.

II. Validity.

Under Sections 101 and 102 of the patent laws, an inventor is entitled to a patent if he discovers a "new and useful improvement" on a machine that was not "known or used by others." There can be little doubt that the Fenske patent satisfies the relatively liberal tests of these Sections. Section 103 indicates that Sections 101 and 102 prevent patentability only where the invention was "identically disclosed" by the prior art. It is abundantly evident that the use of a transparent plate as a carrier for a stylus to inscribe on a projector slide was not "identically disclosed" by the prior art.

The important issue on this appeal, then, is whether appellant's invention would have been "obvious" to a person having ordinary skill in the pertinent art. This Court has recently set out the reasoning to be employed in resolving an issue of obviousness under 35 U.S.C., Section 103, applying the teaching of Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684 (1966). Formal Fashions, Inc. v. Braiman Bows, Inc., Docket No. 30580, decided December 16, 1966, 369 F.2d 536.

We turn then to the differences between the references cited above and the Fenske patent. Claim 6, agreed to be typical, reads:

Data-plotting and projection-indicating means comprising a substantially transparent plot member provided with an opaque coating of removable material, a second substantially transparent member arranged in parallelism with the first member, a stylus carried by the second member in marking engagement with the removable material on the first member, means to move said members relatively to each other to cause the stylus on the second member to remove material from the coating on the first
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