Adams v. United States

• Decision Date: 17 April 1964
• Docket Number: No. 163-60.,163-60.
• Parties: Bert N. ADAMS, Emma Adams, George Hallingby (individually and as Executor of the Estate of Olaf Hallingby, deceased), Jane Maesel, Iris Petry, Lewis M. Schott, Mary Ellen Hallingby Seimers, and Helen Louise Sutcliffe (individually and as Executrix of the Estate of Ernest M. Sutcliffe, deceased) v. The UNITED STATES.
• Court: U.S. Claims Court

330 F.2d 622 (1964)

Bert N. ADAMS, Emma Adams, George Hallingby (individually and as Executor of the Estate of Olaf Hallingby, deceased), Jane Maesel, Iris Petry, Lewis M. Schott, Mary Ellen Hallingby Seimers, and Helen Louise Sutcliffe (individually and as Executrix of the Estate of Ernest M. Sutcliffe, deceased) v. The UNITED STATES.

No. 163-60.

United States Court of Claims.

April 17, 1964.

John A. Reilly, New York City, for plaintiffs. Richard A. Huettner, William J. Ungvarsky and Kenyon & Kenyon, New York City, were on the brief.

Paul F. Arseneau, Atty., Dept. of Justice, with whom was Asst. Atty. Gen. John W. Douglas, for defendant.

Before JONES, Chief Judge, and WHITAKER, LARAMORE, DURFEE, and DAVIS, Judges.

PER CURIAM.

This case was referred to Trial Commissioner Donald E. Lane, pursuant to Rule 45(a),¹ to make findings of fact and recommendation for conclusions of law. The commissioner has done so in a report filed January 28, 1963. Both plaintiffs and defendant have filed exceptions to the commissioner's report and briefs in support thereof.

The case was submitted to the court, on oral argument of counsel, on the issue of liability. The court agrees with, and adopts, the findings and recommendation of the commissioner, with a slight modification,² as the basis for its judgment in the case. Plaintiffs' patent is valid and the invention covered therein was used by defendant without authorization. Plaintiffs are entitled to recover reasonable and entire compensation for such unauthorized use, and judgment will be entered to that effect. The extent of liability will be determined in further proceedings before a trial commissioner, pursuant to Rule 47(c) (2).

OPINION OF COMMISSIONER

This is a claim for compensation under 28 U.S.C. ? 1498, for unlicensed use of a patented invention, for compensation under 28 U.S.C. ? 1491 for breach of implied contract, and for compensation under the Mutual Security Acts of 1951 and 1954, 22 U.S.C. ?? 1668 (repealed in 1954) and 1758, respectively.

The subject matter concerns an electric battery disclosed in United States Letters Patent 2,322,210, issued June 22, 1943, to Bert N. Adams, one of the petitioners herein. The patent disclosure, patent claims in suit, and the accused batteries used by defendant are described in the accompanying findings of fact. The several issues of law involved are discussed in the following comments.

One of the important issues raised by the pleadings is whether the fact that the individual constituents of the Adams battery have been long known in the art and have been used in various combinations in numerous batteries developed in the past, negates the essential element of novelty required in a valid patent, even though the specific combination used by Adams was never before disclosed and produced unusual and unexpected results. The defendant has cited some 24 prior disclosures against the Adams patent. These citations, some of which date back as far as 1880, show that each of the elements of the Adams battery was well known in the battery-making art at least 50 years before the Adams application for letters patent. Adams, after all these many disclosures, put together the specific combination of elements that resulted in a lightweight cell which could be exposed to extreme temperature conditions and which, upon activation by water, produced a constant electric potential. The volume of the prior art points to the novelty of the Adams invention. It has been frequently held that voluminous prior art indicates that none of the prior art is in point or indicates that prior attempts to solve the problem have not met with success. In the case of Reynolds v. Whitin Mach. Works, 167 F.2d 78, at pages 83 and 84 (4th Cir., 1948), it was held:

"Defendant has cited 21 patents as basis for its contention that complainants\' invention is lacking in novelty; and this in itself is evidence of the weakness of the contention. Such a citation of so many prior patents almost always means either that none of them is in point and that the patentee has brought together for the purpose of his invention devices to be found in prior patents of different character, or that there have been prior attempts to solve the problem with which he was confronted which have not met with success."

The fact that it was known to one skilled in the battery art that the various individual components of the Adams battery could be used in designing batteries, does not make the Adams invention obvious and unpatentable within the meaning of 35 U.S.C. ? 103. The pertinent portion of this section reads as follows:

"A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."

The evidence presented during the trial shows that although the necessary materials and techniques were available to the battery experts for over 50 years, no one put them together, or recognized that the combination would work, or yield new and unexpected results. Further, the evidence shows that the invention constituted an important advance in the art and has had many successful uses. The courts have recognized that obviousness is negated where the patent teaches a solution which has long eluded the researchers in the art, even though all the elements required to provide the solution have been readily available. In Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, at page 279, 64 S.Ct. 593, at page 594, 88 L.Ed. 721 (1944), in supporting the validity of a patent relating to a leakproof dry cell for a flashlight battery, Mr. Justice Roberts, writing for the Supreme Court, said:

"Viewed after the event, the means Anthony adopted seem simple and such as should have been obvious to those who worked in the field, but this is not enough to negative invention. During a period of half a century, in which the use of flashlight batteries increased enormously, and the manufacturers of flashlight cells were conscious of the defects in them, no one devised a method of curing such defects. Once the method was discovered it commended itself to the public as evidenced by marked commercial success. These factors were entitled to weight in determining whether the improvement amounted to invention and should, in a close case, tip the scales in favor of patentability. Accepting, as we do, the findings below, we hold the patent valid and infringed."

See also Peerless Equipment Co., v. W. H. Miner, Inc., 93 F.2d 98 (7th Cir., 1937), and Remington Rand Business Service, Inc. v. Acme Card System Co., 71 F.2d 628 (4th Cir., 1934). While the use of any of the individual components of the Adams battery cell may have been obvious at the time of the invention, the invention as a whole was not obvious, at the time the invention was made, to a person having ordinary skill in the art.

The fact that the Adams patent discloses only a single embodiment of his invention does not necessarily restrict the claims of his patent to that particular embodiment. The Adams patent discloses that the cuprous chloride electrode is made by heating cuprous chloride until it melts and then forming it into a cylindrical electrode by the use of a mold. The defendant alleges that since the cuprous chloride electrode is referred to in the specification and the claims as fused, the claims must be restricted to the type of electrode described in the specification of the patent. The facts show that the term fused may refer to unifying by means other than by the particular method described in the specification of the Adams patent. The description of an invention in the specification is required by 35 U.S.C. ? 112, which reads in part as follows:

"The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention."

It is evident that this section does not require an inventor to disclose every possible way in which his invention may be used, nor does it limit the claims of the patent to the particular mode which the inventor considers best at the time of filing his application for patent. In the case of Smith v. Snow, 294 U.S. 1, at page 11, 55 S.Ct. 279, at page 283, 79 L.Ed. 721 (1935), Mr. Justice Stone, in discussing this point, said:

"We make take it that, as the statute requires, the specifications just detailed show a way of using the inventor\'s method, and that he conceived that particular way described was the best one. But he is not confined to that particular mode of use, since the claims of the patent, not its specifications, measure the invention."

It is clear that the Adams patent claims are not limited to covering only electrodes made in the specific manner described in the specification.

The fact that in some instances silver chloride may be equivalent to cuprous chloride does not entitle the plaintiffs to extend the coverage of the Adams patent claims to cover silver chloride electrodes as well as cuprous chloride electrodes. Neither the specification nor the claims of the Adams patent mention that silver chloride may be used as the electronegative electrode. However, plaintiffs allege that silver chloride and cuprous chloride were well known electrochemical equivalents prior to the Adams invention, and that cells made with silver chloride electrodes also infringe the claims of the patent. The doctrine of equivalents is based on the theory that one should...