United States v. Adams

• Decision Date: 21 February 1966
• Docket Number: No. 55,55
• Citation: 383 U.S. 39,148 USPQ 479,86 S.Ct. 708,15 L.Ed.2d 572
• Parties: UNITED STATES, Petitioner, v. Bert N. ADAMS et al
• Court: U.S. Supreme Court

383 U.S. 39

86 S.Ct. 708

15 L.Ed.2d 572

UNITED STATES, Petitioner,

v Bert N. ADAMS et al.

No. 55.

Argued Oct. 14, 1965.

Decided Feb. 21, 1966.

[Syllabus from pages 39-40 intentionally omitted] John W.Douglas, Washington, D. C., for petitioner.

John A. Reilly, New York City, for respondents.

Mr. Justice CLARK delivered the opinion of the Court.

This is a companion case to No. 11, Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, decided this day along with Nos. 37 and 43, Calmar, Inc. v. Cook Chemical Co. and Colgate-Palmolive Co. v. Cook Chemical Co. The United States seeks review of a judgment of the Court of Claims, holding valid and infringed a patent on a wet battery issued to Adams. This suit under 28 U.S.C. § 1498 (1964 ed.) was brought by Adams and others holding an interest in the patent against the Government charging both infringement and breach of an implied contract to pay compensation for the use of the invention. The Government challenged the validity of the patent, denied that it had been infringed or that any contract for its use had ever existed. The Trial Commissioner held that the patent was valid and infringed in part but that no contract, express or implied, had been established. The Court of Claims adopted these findings, initially reaching only the patent questions, 330 F.2d 622, 165 Ct.Cl. 576, but subsequently, on respondents' motion to amend the judgment, deciding the contract claims as well. 330 F.2d, at 634, 165 Ct.Cl., at 598. The United States sought certiorari on the patent validity issue only. We granted the writ, along with the others, in order to settle the important issues of patentability presented by the four cases. 380 U.S. 949, 85 S.Ct. 1090, 13 L.Ed.2d 968. We affirm.

I.

While this case is controlled on the merits by No. 11, Graham, 383 U.S. 1, 86 S.Ct. 684, respondents have raised threshold issues as to our jurisdiction which require separate handling. They say that the petition for certiorari came too late, contending that the 90-day period for filing began with the date of the initial judgment rather than the date of the decision on the contract issue, citing F.T.C. v. Minneapolis-Honeywell Co., 344 U.S. 206, 73 S.Ct. 245, 97 L.Ed. 245 (1952). We cannot agree; first, because that case did not involve a timely motion to amend the judgment¹ and, secondly, because here the Government's liability was inextricably linked with the alleged contract action which was not determined until the latter judgment.

Nor is there merit in respondents' contention that the Government failed to comply with the requirements of our Rules 21(1) and 33 as to service, since these requirements are not jurisdictional, no prejudice resulted and the failure was inadvertent.

We turn now to the merits.

II.

The Patent in Issue and Its Background.

The patent under consideration, U.S. No. 2,322,210, was issued in 1943 upon an application filed in December 1941 by Adams. It relates to a nonrechargeable, as opposed to a storage, electrical battery. Stated simply, the battery comprises two electrodes—one made of magnesium, the other of cuprous chloride which are placed in a container. The electrolyte, or battery fluid, used may be either plain or salt water.

The specifications of the patent state that the object of the invention is to provide constant voltage and current without the use of acids, conventionally employed in storage batteries, and without the generation of dangerous fumes. Another object is 'to provide a battery which is relatively light in weight with respect to capacity' and which 'may be manufactured and distributed to the trade in a dry condition and rendered serviceable by merely filling the container with water.' Following the specifications, which also set out a specific embodiment of the invention, there appear 11 claims. Of these, principal reliance has been placed upon Claims 1 and 10, which read:

'1. A battery comprising a liquid container, a magnesium electropositive electrode inside the container and having an exterior terminal, a fused cuprous chloride electronegative electrode, and a terminal connected with said electronegative electrode.'

'10. In a battery, the combination of a magnesium electropositive electrode, and an electronegative electrode comprising cuprous chloride fused with a carbon catalytic agent.'

For several years prior to filing his application for the patent, Adams had worked in his home experimenting on the development of a wet battery. He found that when cuprous chloride and magnesium were used as electrodes in an electrolyte of either plain water or salt water an improved battery resulted.

The Adams invention was the first practical, water-activated, constant potential battery which could be fabricated and stored indefinitely without any fluid in its cells. It was activated within 30 minutes merely by adding water. Once activated, the battery continued to deliver electricity at a voltage which remained essentially constant regardless of the rate at which current was withdrawn. Furthermore, its capacity for generating current was exceptionally large in comparison to its size and weight. The battery was also quite efficient in that substantially its full capacity could be obtained over a wide range of currents. One disadvantage, however, was that once activated the battery could not be shut off; the chemical reactions in the battery continued even though current was not withdrawn. Nevertheless, these chemical reactions were highly exothermic, liberating large quantities of heat during operation. As a result, the battery performed with little effect on its voltage or current in very low temperatures. Relatively high temperatures would not damage the battery. Consequently, the battery was operable from 65 below zero Fahrenheit to 200 Fahrenheit. See findings at 330 F.2d, at 632, 165 Ct.Cl., at 591—592.

Less than a month after filing for his patent, Adams brought his discovery to the attention of the Army and Navy. Arrangements were quickly made for demon- strations before the experts of the United States Army Signal Corps. The Signal Corps scientists who observed the demonstrations and who conducted further tests themselves did not believe the battery was workable. Almost a year later, in December 1942, Dr. George Vinal, an eminent government expert with the National Bureau of Standards, still expressed doubts. He felt that Adams was making 'unusually large claims' for 'high watt hour output per unit weight,' and he found 'far from convincing' the graphical data submitted by the inventor showing the battery's constant voltage and capacity characteristics. He recommended, 'Until the inventor can present more convincing data about the performance of his (battery) cell, I see no reason to consider it further.'

However, in November 1943, at the height of World War II, the Signal Corps concluded that the battery was feasible. The Government thereafter entered into contracts with various battery companies for its procurement. The battery was found adaptable to many uses. Indeed, by 1956 it was noted that '(t)here can be no doubt that the addition of water activated batteries to the family of power sources has brought about developments which would otherwise have been technically or economically impractical.' See Tenth Annual Battery Research and Development Conference, Signal Corps Engineering Laboratories, Fort Monmouth, N.J., p. 25 (1956). Also, see Finding No. 24, 330 F.2d, at 632, 165 Ct.Cl., at 592.

Surprisingly, the Government did not notify Adams of its changed views nor of the use to which it was putting his device, despite his repeated requests. In 1955, upon examination of a battery produced for the Government by the Burgess Company, he first learned of the Government's action. His request for compensation was denied in 1960, resulting in this suit.

III.

The Prior Art.

The basic idea of chemical generation of electricity is, of course, quite old. Batteries trace back to the epic discovery by the Italian scientist Volta in 1795, who found that when two dissimilar metals are placed in an electrically conductive fluid an electromotive force is set up and electricity generated. Essentially, the basic elements of a chemical battery are a pair of electrodes of different electrochemical properties and an electrolyte which is either a liquid (in 'wet' batteries) or a moist paste of various substances (in the so-called 'drycell' batteries). Various materials which may be employed as electrodes, various electrolyte possibilities and many combinations of these elements have been the object of considerable experiment for almost 175 years. See generally, Vinal, Primary Batteries (New York 1950).

At trial, the Government introduced in evidence 24 patents and treatises as representing the art as it stood in 1938, the time of the Adams invention. ² Here, however, the Government has relied primarily upon only six of these references³ which we may summarize as follows.

The Niaudet treatise describes the Marie Davy cell invented in 1860 and De La Rue's variations on it. The battery comprises a zinc anode and a silver chloride cathode. Although it seems to have been capable of working in an electrolyte of pure water, Niaudet says the battery was of 'little interest' until De La Rue used a solution of ammonium chloride as an electrolyte. Niaudet also states that '(t)he capital advantage of this bat- tery, as in all where zinc with sal ammoniac (ammonium chloride solution) is used, consists in the absence of any local or internal action as long as the electric circuit is open; in other words, this battery does not work upon itself.' Hayes likewise discloses the De La Rue zinc-silver chloride cell, but with certain mechanical differences designed to restrict the battery from continuing to act upon itself.

The Wood patent is relied upon by the Government as teaching the substitution of magnesium, as in the Adams patent, for zinc. Wood's patent,...