Allen v. Radio Corporation of America

• Citation: 47 F. Supp. 244
• Decision Date: 06 October 1942
• Docket Number: Civil Action No. 217.
• Parties: ALLEN et al. v. RADIO CORPORATION OF AMERICA (RCA MFG. CO., Inc., Intervenor).
• Court: U.S. District Court — District of Delaware

47 F. Supp. 244

ALLEN et al. v. RADIO CORPORATION OF AMERICA (RCA MFG. CO., Inc., Intervenor).

Civil Action No. 217.

District Court, D. Delaware.

October 6, 1942.

H. Stanley Lynch, of Morris, Steel, Nichols & Arsht, of Wilmington, Del., and Harold Olsen, of Chicago, Ill., for plaintiffs.

Herbert L. Cohen, of Wilmington, Del., and Stephen H. Philbin and John B. Cuningham, both of New York City, for defendants.

LEAHY, District Judge.

This is a suit for infringement of certain claims of two patents covering radio vacuum tubes.¹ Plaintiffs filed motions to strike a defense from the answer and for further answers to interrogatories. Defendants then filed a motion for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, on the ground that the four patent claims in suit are invalid. The motion is accompanied by the affidavit of a radio expert which states, in substance, that the inventions covered by the claims in suit were not disclosed in the Patent Office proceedings until twelve years after the original application was filed² and "three years after tubes, charged to infringe, had been placed on the market."

Plaintiffs filed no counter-affidavits. I gather from their brief, although they do not specifically so state, that they rely on the presence in the case of genuine issues of fact as the reason for denial of defendants' motion. However, in the light of plaintiffs' admissions arising from their failure to file counter-affidavits, I find there are no issues of fact remaining. Plaintiffs endeavor to raise one in their brief by arguing that the exhibits attached to the affidavit of defendants' expert do not corroborate his statements that the alleged infringing tubes were offered for sale and publicly known in March of 1932, because they do not disclose sufficient of the structural features of the devices in issue for the court to determine whether they include the elements of the claims sued upon. Rule 56, it seems to me, does not contemplate the raising of an issue of fact for the first time in a brief of counsel. This Circuit indirectly touched on the point when it recently held in Black & Yates, Inc., et al. v. Mahogany Association, Inc., et al., 129 F.2d 227, 237, decided June 10, 1942: "Briefs are not part of the record."

In the absence of any genuine issues of fact, the court is authorized by Rule 56 to decide the case as a matter of law Despite cases which state that questions involving the validity of patents should not ordinarily be determined without the benefit of expert testimony and the opportunity for full cross-examination,³ I am unable to see why the granting or withholding of judgment under Rule 56 should depend upon different principles and call for the presence of different considerations in an infringement case than in other civil actions. The rule provides that the judgment sought shall be rendered on the pleadings, depositions, admissions, and affidavits, if there remains no genuine issue as to any material fact. There is no special rule for patent cases.

I. Claim 8 of Reissue Patent No. 21,240

This claim is identical with claim 8 of the original patent No. 2,010,463, which was issued on August 6, 1935, and surrendered on the same day upon application for the reissue patent, which was granted on April 9, 1940. Claim 8 reads: "8. A vacuum tube envelope housing a plurality of coil electrodes, each electrode having adjacent turns spaced from one another, said electrodes being inductively related to each other, and a dielectric member having edges interposed between two of said electrodes, one of said edges being separated from said envelope." (Italics mine.)

The validity of this claim is attacked on two grounds: (a) It is not disclosed in the description of the patent; and (b) it was first submitted too late in the patent proceedings.

(a) Disclosure. The statute (35 U.S.C.A. § 33) specifically requires the inventor to file with the Patent Office a description of the patent "in such full, clear, concise, and exact terms as to enable any person skilled in the art or science * * * to make * * * the same." Accordingly, the specifications of a patent must disclose details of manufacture of the invention. There must not be "too much claim in the claims and too little specification in the specifications."⁴

As to at least two elements of this claim, I find no help in the descriptive part or specifications of the patent.

First, there is no disclosure of the "edges of the dielectric member interposed between two of said electrodes." Plaintiffs argue that this deficiency is imaginary inasmuch as it results from a misreading of the claim. They say it should be read as if there were commas before and after "having edges", so that the entire dielectric member — not just its edges — is interposed between two of the electrodes.

But supplying this punctuational defect — if such there be — is of no aid with respect to a second deficiency in the specifications; they are silent as to the separation of one of the edges from the envelope of the tube.

As defendants point out, the description cannot even be derived from any of the nine drawings accompanying the patent. Both of the tubes shown respectively in Fig. 1 and Fig. 8 have dielectrics suspended in the center of the tube without apparent support and without touching the envelope at any point and, as plaintiffs' counsel stated, the clause in the claim, "one of said edges being separated from said envelope" means that the other touches it. Moreover, even if we assume the drawings do look to disclosure, a gap in the description of a patent cannot be supplied by drawings. As stated by Mr. Justice Brandeis in Permutit Company v. Graver Corporation, 284 U.S. 52, 60, 52 S.Ct. 53, 55, 76 L.Ed. 163: "Moreover, while drawings may be referred to for illustration and may be used as an aid in interpreting the specification or claim, they are of no avail where there is an entire absence of description of the alleged invention, or a failure to claim it. The statute 35 U.S.C.A. § 33 requires the patentee not only to explain the principle of his apparatus and to describe it in such terms that any person skilled in the art to which it appertains may construct and use it after the expiration of the patent, but also to inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not."

These requirements are clearly not complied with by claim 8 of defendants' reissue patent.

(b) Claim made too late. An examination of the file wrapper discloses that claim 8 in its present form was first made in a petition for substitution of claims dated May 2, 1935, approximately twelve years after the original application was filed. According to the affidavit of defendants' expert — I assume his statements to be true for purposes of the present motion — this was three years after the tubes alleged to infringe had been placed on the market. The law as to late filing was recently stated in Muncie Gear Works v. Outboard, Marine & Mfg. Co., 315 U.S. 759, 62 S.Ct. 865, 869, 86 L.Ed. 1171. The Supreme Court there stated: "The claims in question are invalid if there was public use, or sale of the device which they are claimed to cover, more than two years before the first disclosure thereof to the Patent Office."⁵ It was earlier stated in Chicago & N. W. Railway Co. v. Sayles, 97 U.S. 554, 563, 24 L.Ed. 1053, that: "Courts should regard with jealousy and disfavor any attempts to enlarge the scope of an application once filed, or of a patent once granted, the effect of which would be to enable the patentee to appropriate other inventions made prior to such alteration, or to appropriate that which has, in the mean time, gone into public use." See, also, Judge Biggs' statement in National Hairdressers' & C. Ass'n v. Philad Co., D.C., 41 F.Supp. 701, at page 706.

Plaintiffs do not refute or attempt to distinguish the rule of law as...