Lyon v. Bausch & Lomb Optical Co.

• Citation: 224 F.2d 530
• Decision Date: 20 June 1955
• Docket Number: No. 216,Docket 23345.,216
• Court: United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
• Parties: Dean A. LYON, Plaintiff-Appellee, v. BAUSCH & LOMB OPTICAL CO., Defendant-Appellant.

224 F.2d 530 (1955)

Dean A. LYON, Plaintiff-Appellee, v. BAUSCH & LOMB OPTICAL CO., Defendant-Appellant.

No. 216, Docket 23345.

United States Court of Appeals Second Circuit.

Argued April 6, 1955.

Decided June 20, 1955.

On Petition For Rehearing July 29, 1955.

Edward H. Cumpston, Rochester, N. Y., John N. Cooper, New York City (G. A. Ellestad, Rochester, N. Y., on the brief), for appellant.

John W. Malley, Washington, D. C. (C. Willard Hayes, Cushman, Darby & Cushman, Washington, D. C., and B. E. Shlesinger, Rochester, N. Y., on the brief), for appellee.

Before HAND, SWAN and HINCKS, Circuit Judges.

HAND, Circuit Judge.

This is an appeal from a judgment of the District Court for the Western District of New York (Burke, J., presiding), sustaining the validity of Patent No. 2,398,382, granted to the plaintiff, Lyon, on April 16, 1946, upon an application filed November 17, 1942. Of the nine claims all but 6 and 7 are in suit; the judgment held all seven valid, and the defendant concedes infringement. Judge Burke, in a long and careful opinion, 119 F.Supp. 42, has stated the evidence in such detail that we may, as we shall, assume familiarity with it in our discussion of the issues involved.

The defendant first challenges the sufficiency of the specifications to support the claims. Throughout the specifications the "coating" to be vaporized is described only as a "suitable coating * * such as metallic fluoride, metallic sulphide, oxide or the like" (page 1, col. 2, lines 26-28), or "mixtures" of these (page 2, col. 1, lines 26-28). The first five claims speak of "a stable, water insoluble, evaporated inorganic salt," and of the last two claims in suit number eight is for a "metallic fluoride" and number nine for "magnesium fluoride." The defendant complains that "suitable coatings" is too vague a description, even when accompanied, as the phrase was, by the specific substances mentioned. Considering the kind of coatings that the art had been using, an acquaintance with which the applicant might impute to anyone practising the process, this objection appears to us unduly captious and hostile to the underlying canons of patent interpretation. In any event, Finding 44 finds facts that dispose of the objection. Indeed, it cannot at any rate apply to claims 8 and 9 where the "inorganic salt" is described as "metallic fluoride," and "magnesium fluoride." As for the other claims in suit we can see no reason to suppose that when the "suitable coating" of the specifications is limited to a "stable, water insoluble, evaporated inorganic salt," anyone seeking to use the process would be left in doubt. The claims always measure and limit the scope of the monopoly; and the defendant does not, and could not properly, suggest that anything that Lyon actually invented he did not disclose when the limitations of the claims are imputed to the description in the specifications. Therefore we are not disposed to draw any distinction between claims 8 and 9 and the other five in suit, though, if we did, it would at most only result in a modification of the judgment not important in this action. As to the objection that the claims confuse or combine process and product, it is so patently untenable that we shall not discuss it.

The important questions are whether the invention had been disclosed in any earlier patent, or had been publicly used, before Lyon filed his application on November 17, 1942; and whether his contribution will support a patent. The process was in two steps: first, to heat the "optical surface" in a vacuum until "adsorbed water and grease have been evaporated from the surface," (page two, col. 1, lines 47, 48); and second, to vaporize an "inorganic salt" within the vacuum, meanwhile keeping the "optical surface" heated; "baking of the optical element, evacuation of the chamber and vaporization of the coating material are continued until a suitable layer of the desired thickness * * * has been deposited," (page 2, col. 1, lines 64-68). None of the earlier patents disclosed this sequence, and the nearest were as follows. In November, 1925, Fink and Beers filed the application that issued on December 10, 1929, as Patent No. 1,738,991. It was for a process of coating the inner surfaces of the vacuum chamber of a thermos bottle with vaporized metal, such as magnesium. The purpose of such a coating is to maintain the temperature in the chamber by excluding the heat from the air, or the heat from the contents of the bottle. In April 1929 Winkler and two others applied in Germany for a patent that issued in this country as Patent No. 1,982,774 on December 4, 1934. This was for mirrors made by condensing in a vacuum vaporized metals — e. g. an alloy of aluminum and silver — upon a polished base. ("The adhering capacity of the mirror coatings on metallic substrata is quite considerably increased by keeping the polished metallic substrata hot during the deposition of the mirror coatings.") There were three earlier patents for coating the upper part of the inside of an electric bulb, so that none of the light should be reflected upwards. There were also patents for mirrors, designed of course to reflect the light; and therefore the opposite of the patented coatings, whose purpose is to transmit through the "optical surface" as much as possible of the light falling upon it. The defendant indeed insists, — relying for this on line 12, col. 1, page 1, of the specifications in suit, — that "mirrors" are among those "optical surfaces" or "elements" that the invention covers. However, regardless of any significance of that word where it appears, there cannot be the least doubt that the invention is only for a "light-transmitting optical" element; indeed the coating itself is spoken of as "a light-transmitting evaporated film" (page 1, col. 1, lines 47, 48). The explanation for the inclusion of "mirrors" may be that, as the reflecting coating of a mirror is usually on the rear surface of a transparent plate, it is desirable to have as little light as possible reflected from the front of the plate, so that all would reach the reflecting surface. The purpose of all these patents so widely diverged from that of Lyon that under § 100(b) they would not serve as anticipations, even if the sequence of steps had more closely anticipated his process.

On the other hand Cartwright and Turner took out three earlier patents that were much nearer to Lyon's, for they disclosed coating an "optical surface" with a film of "inorganic salt." The first — No. 2,207,656 — was applied for in December, 1938 and issued on July 8, 1940. It disclosed a process of depositing a coating of non-reflecting substances — "metallicfluorides" — upon a lens or the like by vaporizing it in a vacuum "in the manner now generally well known in the silvering of mirrors and the like" (page 2, col. 1, lines 21-23). The second — No. 2,281,474 — was applied for in March 1939 and issued on April 28, 1942. It disclosed a method of superimposing at least two coatings of different "indices of refraction"; and presupposed the vaporization of "inorganic substances" in a vacuum. The third — No. 2,281,475 — was applied for in August 1939 and issued on the same day as the second: it was for a process (and for its product) of coating a lens with similar substances by vaporizing them in a vacuum and thereafter "baking" at from 350° to 500° C. in order to increase their resistance to detachment — "ruggedness," — a practise that became known in the art as "postbaking." The specifications of none of these patents suggested that the "optical surface" should itself be kept hot while it was being coated; the nearest approach to this being in the third patent which did declare it desirable to bake the "surface" at between 400° to 450° C. before vaporization (page 1, col. 1, lines 41-45), — a step that has come to be known as "preheating," and that is, as we have said, the first step of the patented process. Thus, although Lyon's advance lay only in keeping the "optical surface" itself heated while it was being coated, this had not appeared in any patent or printed publication on November 17, 1942. Before considering whether the patent may depend upon it, we will consider whether Lyon's process had been "in public use or on sale" under 35 U.S.C.A. § 102(b); or whether "the invention was made * * * by another" before Lyon, under § 102(g).

Cartwright was one of the most experienced experts in this field, and had been active in experiment even before the year 1938. The military services, and particularly the Navy, were particularly anxious to find a practical way of coating binoculars, periscopes and other "light-transmitting" glass surfaces, which should make the film at once tenacious and viable. Indeed, some of the testimony imputes to the services a scarcely understandable estimate of the importance of such a coating. The trouble had been that all the earlier coatings, though their proper composition was known, could be readily scratched or even rubbed off. One condition of success was well understood: before being coated the glass surface should be made as clean as possible: all water or grease must be taken off. An accepted way to do this was Lyon's first step: heat the glass in a vacuum. Again, a familiar, perhaps the only practical, way was to coat the glass after it had been cleaned by vaporizing the "inorganic salt" in the same vacuum in which the glass had been "preheated." Finally, it was well understood that to "post-bake" added much to the tenacity of the bond and the "ruggedness" of the coating. However, for some reason, apparently still not quite understood, the art never took Lyon's second step, now generally accepted as the way to secure the optimum bond of the coating to the glass.

Cartwright did indeed fully disclose even this in a letter, written on November 30, 1939, to one, Wilson, of the "Research Corporation," a company engaged in the exploitation of patents,...