755 F.2d 158 (Fed. Cir. 1985), 84-818, Litton Indus. Products, Inc. v. Solid State Systems Corp.

Docket Nº:Appeal Nos. 84-818, 84-858.
Citation:755 F.2d 158
Party Name:225 U.S.P.Q. 34 LITTON INDUSTRIAL PRODUCTS, INC., Appellant/Cross-Appellee, v. SOLID STATE SYSTEMS CORP., Appellee/Cross-Appellant.
Case Date:February 25, 1985
Court:United States Courts of Appeals, Court of Appeals for the Federal Circuit

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755 F.2d 158 (Fed. Cir. 1985)

225 U.S.P.Q. 34



SOLID STATE SYSTEMS CORP., Appellee/Cross-Appellant.

Appeal Nos. 84-818, 84-858.

United States Court of Appeals, Federal Circuit

February 25, 1985

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James L. Magee, Sax & MacIver, Seattle, Wash., and Robert A. Seldon, Beverly Hills, Cal., for appellee/cross-appellant. With them on brief were James P. Donohue, Sax & MacIver, Seattle, Wash., and Jennie M. Crowley, Beverly Hills, Cal.

James R. Uhlir, Christensen, O'Connor, Johnson & Kindness, Seattle, Wash., for appellant/cross-appellee.

Before MARKEY, Chief Judge, MILLER, and NEWMAN, Circuit Judges.

JACK R. MILLER, Circuit Judge.

Litton Industrial Products, Inc. ("Litton") appeals from the decisions 1 of the United States District Court for the Western District of Washington ("district court") that U.S. Patent No. 3,368,280 2 (" '280 patent") is invalid and that Litton violated the Washington Consumer Protection Act, Washington Revised Code Sec. 19.86.020. Solid State Systems Corp. ("Solid State") cross-appeals the district court's decision 3 denying an award of damages and attorney fees for Litton's violation of Washington Revised Code Sec. 19.86.020. We reverse in part, and vacate and remand in part.


The '280 patent, as shown in Figure 2 below, is drawn to an ultrasonic device 11 for cleaning teeth with a vibrating work tool 12. Liquid, such as water, is directed through passages 32 and 34 in housing 14 and bores 46 and 50 of shank 44. From bore 50, the liquid bridges across bent portion 54 to impinge distal end 52. Shank 44 is connected to housing 14 by threaded end 48.


Claims 1, 2, and 3 are illustrative:

1. A work tool for an ultrasonic dental device comprising a shank portion adapted to be connected to a connecting body in the device and a single portion projecting from the shank and terminating in an angled distal work tool end, said shank having a fluid path therethrough with a mouth arranged to direct a stream of water flowing through the shank to impinge on the distal end.

2. A work tool as set forth in claim 2 [sic, claim 1] wherein the said shank is provided with a first and a second recess, the said first recess comprising a seat to hold the portion and the second recess comprising a through bore to communicate with an axial bore in the shank of the tool, whereby a stream of water is adapted to be directed to the second bore to impinge on the distal end of the tool.

3. A work tool as set forth in claim 2 wherein said angled tool end is formed

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by a dog leg bend intermediate the distal end and its connection to the shank so that the stream of water bridges the dog leg in flight to impinge on the distal end.

Two weeks prior to the filing date of the '729 application, 4 Robert J. Blank and Bruce Richman filed patent application No. 533,362 5 ("Blank application"), which was also assigned to C & B. On July 26, 1967, before any prior art was cited against the claims of the '729 application, Bruce Richman received a letter from his patent attorney, Theodore Bishoff, regarding the Blank application ("Bishoff-Richman letter"). One portion of this letter discussed the pertinence of U.S. Patent No. 3,075,288 to Lewis Balamuth, et al. ("Balamuth '288") 6 to the '729 application as follows:

It should be clear that Balamuth ['288]'s Figure 9 anticipates the structure of the liquid passage not only in the transformer or work tool support, but his showing of a slot 138 in the work tool also appears to substantially anticipate your joint and 2nd application with Dr. Charles Friedman [the '729 application].

Despite this letter, Balamuth '288 was not cited to the U.S. Patent and Trademark Office ("PTO") during prosecution of the '729 application.

As shown below, Figure 9 of Balamuth '288 depicts internal passages in ultrasonic dental tool 6 for supplying water to tool 30. By pressing button 136, collar 132 moves against the bias of spring 134 to lift valve plug 130 away from its normally closed position so that water within the tool flows through passages 128 and 127. Slot 138 permits water to leak from passage 127 to tool 30.


In issuing the '280 patent, the PTO did, however, consider, inter alia, U.S. Patent No. 2,874,470 to James R. Richards ("Richards patent") 7 and U.S. Patent No. 2,792,674 to Lewis Balamuth, et al. ("Balamuth '674"). 8

Richards, as shown below in Figure 1, discloses a dental tool 10, which oscillates at high frequency for drilling teeth and filling cavities. Work end wall 31 of tool 10 is provided with a hole 32 through which water from the interior 28 flows to the working area 33 of a tooth. As an alternative to the straight work tip 34 in Figure 1, Richards also suggests angled work tips.


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Balamuth '674 discloses an ultrasonic machine tool, as shown in Figure 1 below, for cutting, grinding, or boring. The tool comprises a mechanical vibration generator 2, a tool holder 6, and a tool 8. Flange 7 of tool holder 6 has a transverse passage 46, which communicates with longitudinal passages 48, to deliver water to work area 50 via grooves 44.


On September 23, 1970, Litton purchased all the stock and assets of C & B including the '280 patent. In 1974, Litton brought actions against Sybron Corporation ("Sybron") 9 and against Johnson & Johnson, Inc. and Key Pharmaceuticals, Inc. ("Johnson & Johnson") 10 for infringement of the '280 patent. In the former action, Sybron sought to invalidate the '280 patent for failure to disclose Balamuth '288 to the PTO. In the latter action, when Johnson & Johnson requested the production of documents, including the Bishoff-Richman letter, Litton's outside counsel read the letter to determine whether it was privileged.

On November 6, 1973, Litton sent Solid State a notice of infringement and a copy of the '280 patent. In June, 1979, Litton brought suit against Solid State for infringement of the '280 patent. In answering Litton's complaint, Solid State denied infringement and raised, inter alia, the following affirmative defenses with respect to the claims of the '280 patent: invalidity under 35 U.S.C. Secs. 102 and 103 and unenforceability for fraudulently withholding Balamuth '288 from the PTO. In addition, Solid State counterclaimed for a declaratory judgment that the '280 patent was invalid, unenforceable, and not infringed. An injunction, damages, costs, and attorney fees were sought by Solid State.

On October 25, 1979, Solid State moved for summary judgment on the grounds that the '280 patent was invalid under 35 U.S.C. Secs. 102 and 103. The district court denied the motion under 35 U.S.C. Sec. 102, because it found that the requirements for anticipation were not met. The motion under 35 U.S.C. Sec. 103 was, however, granted with respect to claims 1-4 of the '280 patent, the

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court finding that there was no genuine issue with respect to the factual inquiries mandated by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). In analyzing the question of obviousness, the court stated that the "most critical feature of [Litton's] device is the internal fluid path" and that Richards, Balamuth '288, and two articles discussing the work of Doctors Ewen and Sorrin ("Ewen and Sorrin articles") 11 were the most relevant references, because they taught this concept. The Ewen and Sorrin articles were held to teach directing a fluid stream to impinge on the end of a work tool. As to the references' failure to show a shank with an internal water passage and a fluid path for directing a stream of water across a dog leg to impinge an angled distal end of the work tool, these claimed features were deemed "distinction[s] without a difference." The district court, citing Walker v. General Motors Corp., 362 F.2d 56, 149 USPQ 472 (9th Cir.1966), refused to consider secondary considerations, concluding that obviousness was clear.

Litton filed a notice of appeal with the United States Court of Appeals for the Ninth Circuit, but later withdrew it.

On May 25, 1982, Solid State filed an amended answer and counterclaim, which added counterclaims alleging that Litton engaged in unfair competition under the Lanham Act, 15 U.S.C. Sec. 1125(a), and Washington Revised Code Sec. 19.86.020. 12 The unfair competition counterclaims were based on Solid State's allegation that Litton refused to sell the invention of the '280 patent and that Litton threatened to file and did file infringement suits, all with knowledge that the '280 patent was...

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