Forbro Design Corp. v. Raytheon Co., Nos. 75-1151 and 75-1152

• Decision Date: 22 March 1976
• Docket Number: Nos. 75-1151 and 75-1152
• Citation: 532 F.2d 758
• Parties: , 1976-1 Trade Cases 60,782 FORBRO DESIGN CORPORATION, Plaintiff-Appellant, v. RAYTHEON COMPANY, Defendant-Appellee. FORBRO DESIGN CORPORATION, Plaintiff-Appellee, v. RAYTHEON COMPANY, Defendant-Appellant.
• Court: U.S. Court of Appeals — First Circuit

Page 758

532 F.2d 758

190 U.S.P.Q. 49, 1976-1 Trade Cases 60,782

FORBRO DESIGN CORPORATION, Plaintiff-Appellant, v. RAYTHEON COMPANY, Defendant-Appellee.

FORBRO DESIGN CORPORATION, Plaintiff-Appellee, v. RAYTHEON COMPANY, Defendant-Appellant.

Nos. 75-1151 and 75-1152.

United States Court of Appeals, First Circuit.

Argued Sept. 9, 1975.

Decided March 22, 1976.

Joseph R. McPhee, Jr., Garden City, N.Y., with whom Andrew Perl, New York City, was on brief, for Forbro Design Corp.

Robert B. Russell, Boston, Mass., with whom Russell & Nields, Henry C. Nields, Concord, N.H., Joseph D. Pannone, Weston, and David A. Tucker, Boston, Mass., were on brief, for Raytheon Co.

Before COFFIN, Chief Judge, CAMPBELL, Circuit Judge, and THOMSEN, Senior District Judge. ^*.

LEVIN H. CAMPBELL, Circuit Judge.

Forbro Design Corporation appeals from a judgment of the district court, 390 F.Supp. 794 (D.Mass.1975), dismissing it patent infringement action against Raytheon Company on the ground that Forbro's patent, No. 3,028,538 (more particularly its claims 1-4) was obvious under 35 U.S.C. § 103. Raytheon cross-appeals from the court's dismissal of Raytheon's counterclaim alleging that Forbro had violated the antitrust laws in its use of the patent, and from the court's rejection of its affirmative defenses other than obviousness and of its claim for attorneys' fees. ¹

The patent in suit was applied for on August 4, 1958, by Aaron Rosenfeld and Kenneth Kupferberg and issued on April 3, 1962. Thereafter it was assigned to Forbro, of which Dr. Kupferberg is a principal. Though the original patent had seven claims, Raytheon is only charged with infringing claims 1-4.

The patent is for a transistorized power supply circuit providing direct current voltage that is automatically regulated to remain constant. Sophisticated electronic gear, such as computers, require exceedingly accurate and stable sources of power. To meet their needs, circuits like the patented circuit were developed that even out fluctuations in the voltage coming from an unregulated source.

Through Forbro's patent company, Kepco, Inc., Kenneth Kupferberg, the inventor, a physicist, and his three brothers, have manufactured regulated power supplies of their own design since 1940's. Up to the time of the patented circuit, their power supplies employed vacuum tubes, but by late 1956, transistors were economically feasible, and Dr. Kupferberg became interested in developing transistorized power supplies. Although transistors were well known after the early 1950's and Kupferberg was not the first to apply them to power supplies, they had been too costly before the mid-50's for use in most commercial circuits.

On March 1, 1957, Kupferberg hired Robert Moog, a young engineer with some background in transistors, to assist him in developing a transistorized power supply. Moog was instructed that they had only four or five months to design and build a marketable model, and this schedule was met. Proceeding from Kepco's previously developed vacuum tube models, especially Model 2600, Moog in consultation with Kupferberg ² engineered the patented circuit, allegedly by June 7, 1957. Kupferberg is said to have sketched the basic concept in early March, though whether by March 16 as stated in certain interference papers or at another time is unclear.

The alleged invention is a "combination" invention-that is, the design of the circuit, not any novelty in its components, is what is claimed to be unique. In 1957 all the basic ingredients were well known. The circuit employs a control-amplifier, a device which compares variations in output voltage against a stable reference voltage, and reacts to any inequality by developing a control voltage that is used to restore equality. It also employs a series-pass device, which, reacting to the correction from the control amplifier, varies its resistance in such a manner as to offset and balance the change in the dc output voltage. Dr. Kupferberg testified that from 1948 on Kepco manufactured power supplies capable of regulating all necessary voltage and employing series-pass elements and a reference.

The patented circuit was conceived, according to Dr. Kupferberg, with several objectives. One was the minimization of voltage across the control amplifier and dissipation of energy in the series-pass device. Another was to achieve a "universal" circuit-one that could use the same control amplifier and the same components with different output voltages. Previous devices, due in part of fact that higher voltages were required to operate the vaccum tubes, had had to be designed specifically for different voltage ranges. Dr. Kupferberg testified that the key to achieving his objectives was the patented way of interconnecting the transistorized components. A model utilizing the new circuit was displayed publicly in August, 1957. The basic concept has since been embodied in thousands of units produced commercially by Kepco, and has been employed by others, including Raytheon.

The utility of the circuit is not questioned. What is questioned, by Raytheon, is whether designing the circuit required more skill or knowledge than one might expect of qualified person presented with the opportunity to use transistors and having Kupferberg's aims in mind.

Forbro claims that Kupferberg's insight led to "a new theory of design", and it points especially to the connection of one input terminal of the control amplifier, one terminal of the load circuit, one terminal of the reference voltage, and one terminal the series-pass device at a common point, terminal 21 in the patent. This arrangement is said to permit a very small reference voltage and to keep the voltage across the control amplifier very low. Thus 1000 volts can be controlled by a reference of but one or two volts. Forbro contends that this basic design, featuring great flexibility and simplicity, has been used without change ever since it was developed, demonstrating its unique value.

The district court found that the only prior art cited in the patent was Chase, U.S. Patent No. 2,751,549, and that neither party raised this as pertinent at trial. Instead, attention at trial focused particularly upon U.S. Patent No. 2,840,777 ("DeBlasio") ³ which, Raytheon claimed, fully anticipated the patent in suit. Raytheon also contends that appellant's own unpatented Model 2600, using tubes, largely anticipated the patent circuit.

The court found that circuitry revealed in DeBlasio was not identical, so as to render the patent in suit void under § 102. However, it concluded that the teaching of DeBlasio, added to what would have been known to one with ordinary skill in the art in 1957, would have enabled the designing of a "common point" and standardized control amplifier, two principal advantages claimed for the patented circuit. A third claimed advantage, the low voltage reference, was held not to have been significant aim of the inventor. The court stated that while the patent in suit had enjoyed commercial success, there was no showing that it solved a problem that had remained unsolved.

"There was evidence that other power supply manufacturers were engaged in the transistorization of power supplies and the stipulations in Appendix 'B' reveal that the technology to arrive at the answers contained in the patent was available in the prior act." 390 F.Supp. at 802.

The court accordingly held the patent invalid for obviousness under 35 U.S.C. § 103.

35 U.S.C. § 103 provides that a patent may not be obtained, even though the invention is not disclosed or otherwise anticipated under § 102,

"if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

This codification replaced, in 1952, the previous "invention" standard. See Graham v. John Deere, 383 U.S. 1, 14-15, 86 S.Ct. 684, 692, 15 L.Ed.2d 545, 554 (1966). Underlying both formulations is the constitutionally-based premise that no one may hold a patent monopoly if the effect is "to remove existent knowledge from the public domain, or to restrict free access to materials already available." Id. at 6, 86 S.Ct. at 688, 15 L.Ed.2d at 550; A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162, 166 (1950). Thus here the district court had to decide whether the patented circuitry represented an obvious application of knowledge already within the public domain, or whether the concept of the patentee added measurably to the public's store of knowledge, and so entitled him to the reward of a patent.

We return now to Forbro's assignments of error.

1. Forbro insists that the district court was wrong to reject its contention that because DeBlasio and Model 2600 were both cited in the file of an interference proceeding taking place soon after the patent was allowed, the patent is entitled to an "enhancement" of the presumption of validity. Hildreth v. Mastoras, 257 U.S. 27, 32, 42 S.Ct. 20, 22, 66 L.Ed. 112, 115 (1921); Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 430 F.2d 221 (6th Cir. 1970), cert. denied, 401 U.S. 939, 91 S.Ct. 932, 28 L.Ed.2d 218 (1971); Reynolds v. Whitin Machine Works, 167 F.2d 78 (4th Cir.) cert. denied, 334 U.S. 844, 68 S.Ct. 1513, 92 L.Ed. 1768 (1948); Gordon Form Lathe Co. v. Walcott Machine Co., 32 F.2d 55, 57 (6th Cir. 1929). The district court ruled that the interference was not concerned with the patentability of claims; that there was no enhancement; and that the fact that some pertinent prior art was not before the examiner in the initial prosecution "somewhat weakens the statutory presumption." ⁴

The parties weave intricate arguments and counter-arguments that, on the one hand, patentability was a direct concern of the primary examiner who ruled on the motions to dissolve the...