ACS Hosp. Systems, Inc. v. Montefiore Hosp.
| Decision Date | 25 May 1983 |
| Docket Number | Civ. A. No. 81-0787. |
| Citation | 564 F. Supp. 330 |
| Parties | ACS HOSPITAL SYSTEMS, INC., Plaintiff, v. MONTEFIORE HOSPITAL and Wells National Services Corporation, Defendants. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
Eric Reif, Pittsburgh, Pa., Frank J. Benasutti, Philadelphia, Pa., for plaintiff.
Alan Garfinkel, Pittsburgh, Pa., Darryl Mexic, Sughrue, Mion, Zinn, MacPeak Seas, Washington, D.C., for defendants.
Plaintiff ACS Hospital Systems, Inc., (hereinafter ACS), a company organized by Charles Sonnenberg and assignee of U.S. patent No. 4,183,057 issued to Sonnenberg on January 8, 1980, sues for infringement. Defendants allege invalidity as well as denying infringement. Defendant Wells National Services Corporation (hereinafter Wells) is the supplier of a device leased to and used by defendant Montefiore hospital in connection with the rental of television sets to patients in that hospital.
When television sets were first furnished to hospital patients, the lessor would have an attendant make the rounds daily (or more often), endeavor to rent sets to patients, and then wheel in a standard television set on a cart. In a later stage, the sets were permanently installed, but the switch was equipped with a lock (to which the attendant had the key) so that television could not be viewed by a patient until after he had made arrangements with the attendant and the set had been unlocked for use.
This proved inconvenient when a patient was admitted late in the afternoon, after the attendant had completed his rounds for the day. Under these circumstances the patient could not view television until the next day. Patients and the hospitals complained. One solution was called the "allon" method, which consisted in simply leaving the set unlocked at all times, but this led to abuse and loss of revenue by the lessor (and by the hospital, which received its "cut" under its contract with the lessor).
While Sonnenberg worked for Wells, he sought to provide a totally computerized system, similar to the means by which the device in hotel rooms for seeing X-rated movies can be operated by the customer and automatically added to his hotel bill. The Wells management discouraged this approach, as it would mean that the lessor "worked himself out of a job," since a completely automated system could be handled by the hospital itself, and the lessor, like Othello, would find his "occupation's gone."1
Sonnenberg left the Wells organization on October 1, 1975 and filed the application for the patent in suit on June 19, 1978. Sonnenberg claims that he invented the patented device, called Insta Rent, late in 1977 (PTX 65). It was manufactured early in 1978, and displayed at the Atlantic City hospital convention in May of that year (PTX 47). As of that date ACS holds a registered trademark for the use of that name (PTX 66). At the same time Wells and Montefiore officials became aware of the potential of the Sonnenberg device (PTX 11). The challenged Wells device supplied to Montefiore is properly called Instant On, though occasionally both names are loosely used by persons in the industry.
In paragraph 10 of the specifications issued by Montefiore on December 3, 1979 (PTX 25), it was provided that: "Vendor must insure that television is available for patient's immediate use at all time with responsibility of hostess to arrange payment schedule or discontinuation of T.V. service." The hospital's new contract with Wells dated March 4, 1980 (PTX 34) contained similar language.
Plaintiff contends that thereby Montefiore "induced" infringement, and incurred liability as an infringer under 35 U.S.C. § 271(b). This contention is without merit. The specifications are sufficiently general that they could be satisfied without necessarily using the Sonnenberg device. In fact the "all-on" method would comply with the specifications.2 So would any method not infringing the patent if it effectively permitted a patient to initiate television rental and viewing without the intervention of an attendant. Montefiore can be held, if at all, only for unauthorized use of an infringing device under 35 U.S.C. § 271(a), not for inducement under 35 U.S.C. § 271(b).
After these preliminaries, we turn to the language of Claim 1 of the patent,3 reading as follows:
It will thus be seen that the essential feature of the device claimed is that it permits the patient to use the television set, without the intervention of an attendant, when the switch is locked in the off position, by "overriding" the switch.
Overriding a switch simply means providing an alternative path for electric current so that the appliance may be operated even while the switch remains locked and inoperative.
A striking example of overriding a switch is provided when a juvenile delinquent car thief turns on the engine of the stolen car by using a piece of foil wrapper from chewing gum (or other suitable means) while the ignition switch of the car remains locked.4
Another familiar example is the convenient arrangement by which an electric light may be turned on from upstairs, or at one end of a hall, and turned off from downstairs, or the other end of the hall. A more sophisticated illustration is the system of electronic locks with plastic keys installed in some hotels, where the locked doors may be opened in case of fire or other emergency by an overriding mechanism.
Under Claim 1 of the Sonnenberg patent the patient by pushing two buttons can operate the television in normal fashion without the intervention of an attendant by overriding the key switch which remains locked until the attendant's next appearance, perhaps on the following day.
The procedure by which this is accomplished is shown by Figure 2 of the patent. The patient closes switches 10a and 10b whereby current passes through coil 11. The energized coil causes switch 9a to change position, thereby breaking the path from the tuner to the ground.5 This permits normal operation of the television set. Normal operation is also permitted when the key switch 7 is turned to unlocked position by the attendant and breaks the path of the current through 9a, 9c, 9d, to ground. When the attendant, when the light 5 is on, turns the key switch 7 to connect with coil 8, switches 9a, 9b, 9c, and 9d return to their original positions as in Fig. 2. Switch 9c thus breaks the path to light 5 and it goes out. The override system is then deactivated, but the set will operate normally because, as previously stated, key switch 7 breaks the path through 9a, 7, 9c, and 9d to ground.
No television sets embodying the Sonnenberg patent were offered in evidence, but it is clear that the system operates satisfactorily in practice and has been installed in hospitals, e.g. Moses Taylor Hospital, where Wells employees observed it (PTX 7). The "schema" or diagram in Figure 2 explains clearly the method of operation. (See also PTX 41, pp. 53-64 and trial testimony of Dr. Fred Chernow.)
In the case of the Wells system a large and small set were received as exhibits, and operated from time to time by counsel and witnesses. The small set is of the type used in the intensive care department of Montefiore.
The "schema" of the Wells system is found in Exhibits CY and CZ. The system was designed by Isaak Elbaum, a witness of credible demeanor, who says he prepared the prototype early in 1980 without having seen or examined the Sonnenberg system. A demonstration for the Wells management took place on February 29, 1980 (see Exhibit AU).
It is clear that the Wells system, although it also permits the patient to watch television without the intervention of an attendant, is quite different in design and structure from the Sonnenberg system. The crucial difference is that the Wells system does not contain the element of overriding a locked switch. In the Wells system when the switch is turned to the off position or locked, the set is off and cannot be turned on in any manner or operated at all.6 For the patient to be able to view television normally without the intervention of an attendant, the switch must be in the unlocked position when the patient takes the steps which make the set operable for normal viewing.
In the Wells system the patient, after first pushing the button in the hand control and viewing the advertisement on channel 8 (the "barker channel," so named because of the circus "barker" advertising his wares) telling how to rent the set, must, in accordance with the instructions there given, hold the button down for 15 seconds (or other predetermined time which Wells considers sufficient as a precaution to prevent accidental renting of the set) and the commercial channels may then be viewed normally.7
The mechanism or circuitry by which this result comes about however, is quite different from that in Sonnenberg's system and does not infringe Claim 1 of his patent at all. Basically it makes use of a familiar timing device where an electric charge is built up to a predetermined level, when it makes a semiconductor operate as a conductor, and thus permit current to pass along the path permitting operation of the set.
Both the Sonnenberg and Wells systems make use of a light going on as a...
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ACS Hosp. Systems, Inc. v. Montefiore Hosp.
...case, ACS Hospital Systems, Inc. (ACS), appeals from a judgment of the U.S. District Court for the Western District of Pennsylvania, 564 F.Supp. 330, holding U.S. patent No. 4,183,057, issued to Sonnenberg (the Sonnenberg patent), invalid as obvious under 35 U.S.C. Sec. 103 (1976) and not i......