Philips Elec. & P. Indus. Corp. v. Thermal & Elec. Indus.
| Citation | 450 F.2d 1164 |
| Decision Date | 27 October 1971 |
| Docket Number | No. 19085.,19085. |
| Parties | PHILIPS ELECTRONIC AND PHARMACEUTICAL INDUSTRIES CORP., Appellant, v. THERMAL AND ELECTRONICS INDUSTRIES, INC. |
| Court | United States Courts of Appeals. United States Court of Appeals (3rd Circuit) |
COPYRIGHT MATERIAL OMITTED
Januar D. Bove, Jr., Connolly, Bove & Lodge, Wilmington, Del. (Russell G. Pelton, New York City, Jacob C. Kellem, James M. Mulligan, Jr., Wilmington, Del., on the brief), for appellant.
John M. Calimafde, Sandoe, Hopgood & Calimafde, New York City (Eugene J. Kalil, Michael Ebert, New York City, Lawrence I. Lerner, Newark, N. J., on the brief), for appellee.
Before SEITZ, ADAMS and ROSENN, Circuit Judges.
This is an appeal from a judgment of the District Court of New Jersey in a patent infringement proceeding brought by Philips Electronic and Pharmaceutical Industries Corp. (PEPI) plaintiff-appellant against defendants, Glasseal Products, Inc. and Thermal and Electronics Industries, Inc. (T & E).1 Plaintiff charged the defendants with infringement of PEPI's United States Patent No. 3,035,372 entitled "Method for Making A Glass to Metal Seal" (Mayers Patent). He sought a preliminary and final injunction against further infringement as well as compensation for damages. The defendant-appellee, T & E, denied infringement and offered evidence to show that the Mayers patent was invalid because the teachings it contained had been anticipated by the prior art, or were obvious to one skilled in the art. The cases against Glasseal2 and T & E were consolidated, and tried. In his opinion, the trial judge held that patent no. 3,035,372 was invalid because of "obviousness" under 35 U.S.C. § 103. 311 F.Supp. 17 (D.N.J.1970). PEPI has appealed from this judgment.
Appellant is the assignee of patent no. 3,035,372, originally issued to Karl F. Mayers on May 22, 1962, after lengthy proceedings in the United States Patent Office.3 The patent describes a process for making air tight glass-to-metal seals which are highly resistant to mechanical and thermal shock. Such seals are used to conduct a lead, through a glass insulating member, to the inside of a larger device such as a capacitor, transformer, diode or relay. The seals provide a hermetically sealed electrical connection to the inside of the larger device, keeping it free of air, moisture and dust. In such electrical devices, internal hermeticity is required and an air tight seal is necessary. Because of the thermal and mechanical stresses to which these devices are subjected, the industry sought for many years to develop a seal which could withstand stress without cracking or leaking.
The Mayers patent described a method by which seals of high shock resistant qualities can be made. Both the patent office and the trial court found that the patent successfully fulfilled its purpose. The seals, consisting of an assembly with three components, an outer metal member or ring, an inner metal member which is the electrical conductor, and a glass intermediate member between the ring and the conductor, are vacuum tight. The seals are unified by the application of heat followed by a cooling process having utmost significance. The court below succinctly described the process:
The first step in the process is to assemble the component parts of the seal in a jig. The seal as assembled is described as a mismatched seal. The mismatch is the result of a difference in coefficient of thermal expansion (CTE) of the component parts. The outer metal member of the seal must have a CTE substantially higher than the glass. The glass and inner members have approximately the same CTE. The assembly is subjected to heat until the glass melts and flows radially of its own weight. At that point the glass is stress-free. Annealing is the process of removing or minimizing stress in the glass. After the glass has reached the melting point, the entire assembly is rapidly but uniformly cooled. During this process the outer metal member (because of the difference in CTE) shrinks more rapidly than the glass and exerts compressive forces upon the glass. During the process the outer surface of the glass begins to harden and shrink but the inner part does not shrink proportionately because the glass is a poor conductor of heat. Cooling builds up stress in the glass and the more rapidly the glass is cooled, the greater the stress. By rapid and uniform cooling of the assembly, the interaction of the compressive force of the metal ring on the hardening surface of the glass, plus the forces created within the glass by differential of reaction by different rate of cooling of the inner part combines to build stress within the glass. The inner part which cools less rapidly than the outer surface exerts force against the hardening outer surface of the glass and, in turn, the more rapidly shrinking outer metal ring exerts compressive force against the surface of the glass. It is the combination of compressive force upon the outer surface of the glass while cooling and the expansive force of the less rapidly cooling inner part of the glass against the outer surface which creates and retains stresses in the glass which make it highly resistant to mechanical or thermal shock. Rapid cooling of glass creates stresses which can be undesirable because they are likely to rupture the glass either in process or upon subsequent shock. Slow cooling avoids this because it minimizes the relative difference in temperature of the inside of the glass and the outside surface. But it is alleged that the compressive force of a mismatched outer metal ring permits rapid cooling of the entire assembly without danger of rupture of the glass either in process or after production. 311 F.Supp. at 20-21.
PEPI claims this process produces a seal having a high resistance to mechanical or thermal shock. When molten glass is cooled it passes through what is known as the "annealing range." This is a temperature range in which internal stresses develop within the glass. If the cooling glass passes through this temperature range quickly, these internal stresses are retained in the hardened glass and it is fragile and susceptible to fracture or rupture. If the glass is gradually cooled and brought slowly through the annealing range, the internal stresses dissipate and the hardened glass tends to be stress free and more resistant to shock. It had been the normal practice in the glass industry to "anneal" the glass as it cooled in order to eliminate the internal stresses and most glass-to-metal seals produced by the industry prior to the Mayers process were annealed.
The Mayers process does not involve annealing. In fact, the rapid cooling specified in the patent is designed to avoid annealing the glass, and to induce the stresses before thought hazardous. The seal produced utilizes both the stresses induced within the glass and the compressive force of the contracting metal ring. The alleged novelty of the Mayers process, therefore, lies in its utilization, through rapid cooling, of the internal stresses which the prior art had tried to avoid by annealing.
There was considerable evidence at trial to indicate the superior qualities of compression seals produced by this process as compared to those of the prior art. The evidence showed that these seals tend to be stronger, more durable, reliable and cheaper to produce than the earlier types. PEPI claims its commercial success has been impressive, and eleven other manufacturers have been licensed by PEPI to produce seals using this process.
In finding the Mayers patent invalid because of "obviousness," the trial court made an extensive analysis of the state of the art in the glass seal making industry prior to the alleged Mayers invention. T & E introduced evidence of four processes antedating the Mayers patent which, it asserted, either showed the Mayers process to be in prior use or anticipated in such a way as to make it invalid for "obviousness." Two of these processes, the Fuscite and RCA processes, were found by the trial court to be insufficient to meet the heavy burden of proof necessary to establishing prior use.4 It is necessary to briefly discuss the other two of these processes in order to adequately deal with the questions raised on this appeal.
On March 11, 1937, the German Patent Office issued patent no. 734,115. The German patent disclosed a three component type of compression seal, utilizing materials falling within the coefficient thermal expansion (CTE) range of the Mayers patent.
The trial judge found that the German patent anticipated appellant's claims with respect to the compressive stresses caused by mismatching CTE's. But, in the court's opinion, it did not anticipate the creation of tensile stresses within the glass member caused by rapid cooling. For this reason, the trial court concluded that, standing alone, the German patent did not anticipate the Mayers patent.
The Lorenze patent application, dated November 3, 1941, was introduced by the appellee as an invention "described in a printed publication in this or a foreign country."6 The first claim of the Lorenze application states:
(1) Method of producing gas-tight metal-to-glass seals which are insensitive to temperature and in which compressive stresses are produced in the glass, characterized by the fact that the metal surrounds the glass and the mass of glass is rapidly cooled, immediately after completion of the melting process, by additional coolants from a temperature which lies above the transformation point.
For a prior publication to be sufficient to defeat a patent it must exhibit a substantial representation of the invention in such full, clear, and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own...
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