Aerovox Corporation v. Polymet Mfg. Corporation

• Citation: 67 F.2d 860
• Decision Date: 11 December 1933
• Docket Number: No. 29.,29.
• Parties: AEROVOX CORPORATION v. POLYMET MFG. CORPORATION.
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)

67 F.2d 860 (1933)

AEROVOX CORPORATION v. POLYMET MFG. CORPORATION.

No. 29.

Circuit Court of Appeals, Second Circuit.

December 11, 1933.

Dean, Fairbank, Hirsch & Foster, of New York City (Morris Hirsch, of New York City, of counsel), for appellant.

Schechter, Lotsch & Sulzberger, of New York City (John L. Lotsch, of New York City, of counsel), for appellee.

Before L. HAND, SWAN, and CHASE, Circuit Judges.

L. HAND, Circuit Judge.

This is the usual suit in equity for the infringement of a patent for a method of making a dielectric condenser and for the condenser so made. The art had made such condensers in the past by winding alternate sheets of tin-foil and paper into a cartridge or cylinder, and attaching one terminal to one sheet of foil, and the other, to the second, the paper being the dielectric. The difficulties with this were that though the cartridge was heavily compressed, there would remain air spaces which caused "breakdowns." To correct this the whole cartridge while in the press was put into a vacuum pump, to withdraw the air so far as possible, and was "impregnated" with paraffin or other similar waxes heated so as to flow into the interstices. This worked very well, but it was found that, as the wax cooled, it contracted and still left spaces, though not so great as when the condenser was not impregnated at all. The patent stood upon the art at this stage, and added its own contribution. It was to dip the condenser when so "impregnated" and while the wax was still hot into a bath of oil "having high dielectric strength, nonhygroscopic and free from moisture" (page 2, lines 38-40). Several of such oils were mentioned. The patent proved successful, and we may assume, though we indicate no opinion as to it, that the invention was patentable. The only question which we need decide is whether it had been in public use for more than two years before the original application was filed, February 28, 1929.

Schecker, the inventor, in 1926 and 1927, was an employee of the Dubilier Condenser Company. He was the supervisor in charge of winding such condensers, and appears to have discovered the added step by a happy chance. It was certainly practised by the Dubilier Company in the autumn of 1926, so that the only relevant issue is whether the use was public in the sense of the statute, which here means whether it was secret or experimental. On that issue the patentee has the burden, once the use is proved, and he must establish it by stronger proof than in ordinary civil suits. We should have supposed this settled, were it not for language to the contrary in Austin Machinery Co. v. Buckeye Traction Ditcher Co., 13 F.(2d) 697, 700 (C. C. A. 6). The decision was by a divided court, but the reputation of the judge who wrote the opinion, particularly in patent law, is so high that no one can venture to differ from him without doubts, even when as there the question was not a turning point in the result. The rule which seems to us established has its rise in the language of Matthews, J., in Smith & Griggs Mfg. Co. v. Sprague, 123 U. S. 249, 269, 8 S. Ct. 122, 31 L. Ed. 141, and can hardly be thought to have been unnecessary to the result. The court apparently relied upon it in Root v. Third Avenue Railroad Co., 146 U. S. 210, 226, 13 S. Ct. 100, 36 L. Ed. 946, though only by quotation; but so far as we can find the point has not come up again. However, several Circuit Courts of Appeal have treated the language as authoritative. We have ourselves done so three times. Thomson-Houston Electric Co. v. Lorain Steel Co., 117 F. 249, 252; Eastman v. New York, 134 F. 844, 857; Schrader's Sons v. Wein Sales Corp., 9 F.(2d) 306, 308. So has the First Circuit. Swain v. Holyoke Machine Co., 111 F. 408; Westinghouse, etc., Co. v. Stanley Instrument Co., 133 F. 167, 174 (semble). And so also has the Third, Wendell v. American Laundry Mach. Co., 248 F. 698, 700; and the Seventh, American Ballast Co. v. Davy Burnt Clay Ballast Co., 220 F. 887, 889, 890. There is indeed something to be said for requiring an infringer to prove all the elements of the defence, not only the actual use of the invention, but its public nature; the statute does not distinguish between the two elements. On the other hand certainly when the putative use is by the patentee, it is fairer to put the burden on him, since it is he who has access to the evidence. For example, in the case at bar, Schecker was privy to the use, for he was employed by the Dubilier Company during all the period in question. But whatever the reasons a priori, there has now grown up such a consensus of opinion that until the Supreme Court decides otherwise, we accept this part of the opinion in Smith & Griggs Mfg. Co. v. Sprague, supra, 123 U. S. 249, 8 S. Ct. 122, 31 L. Ed. 141, as authoritative.

In the autumn of 1926, the Dubilier Company filled two orders for condensers, one for the Victor Talking Machine Company, the other for the Willard Company. The number made for the first does not appear, though there is no doubt that they were oil-cooled. For the Willard Company the total number was about one hundred thousand "sections," that is, separate cartridges, seven being used to a condenser. Nearly all of these were oilcooled, and the only question is whether they were sold experimentally, or secretly. A small earlier order to the Western Electric Company shipped in the spring of 1926 was unquestionably only experimental, and still earlier experimental work had been done in 1925. The Dubilier Company had tried various ways to supplement a single paraffin "impregnation" to...