Aerovox Corporation v. Micamold Radio Corporation, 7048.

• Decision Date: 14 May 1936
• Docket Number: No. 7048.,7048.
• Citation: 15 F. Supp. 279
• Parties: AEROVOX CORPORATION v. MICAMOLD RADIO CORPORATION.
• Court: U.S. District Court — Eastern District of New York

15 F. Supp. 279

AEROVOX CORPORATION v. MICAMOLD RADIO CORPORATION.

No. 7048.

District Court, E. D. New York.

May 14, 1936.

Dean, Fairbank, Hirsch & Foster, of New York City (Morris Hirsch, of New York City, of counsel), for plaintiff.

Ward, Crosby & Neal, of New York City (Kenneth S. Neal and Raymond J. McElhannon, both of New York City, of counsel), for defendant.

CAMPBELL, District Judge.

This is a suit for the alleged infringement of patent No. 1,815,768, issued to Alexander Georgiev assignor to Aerovox Wireless Corporation, now Aerovox Corporation for Electrolyte, granted July 21, 1931, and patent No. 1,789,949, issued to Alexander Georgiev assignor to Aerovox Wireless Corporation, now Aerovox Corporation, for Electrolytic Cell, granted January 20, 1931.

Both of the patents in suit were adjudicated valid and infringed by the Second Circuit Court of Appeals on appeal from the Southern District Court of New York, in Aerovox Corporation v. Concourse Electric Co., Inc., 65 F.(2d) 386.

The defendant Micamold Radio Corporation manufactures and sells dry electrolytic condensers that are alleged to infringe the Structure patent 1,789,949, and makes electrolyte for its dry electrolytic condensers alleged to infringe the electrolyte patent 1,815,768.

Both of the patents in suit were involved by way of counterclaim in the suit of Ruben Condenser Co. et al. v. Aerovox Corporation tried in this court before me and reported at 7 F.Supp. 168. The Circuit Court of Appeals affirmed this court's dismissal of the counterclaim in the Mallory Case (Ruben Condenser Co. et al. v. Aerovox Corporation, 77 F.(2d) 266), because it agreed with this court that Mallory was entitled to immunity under the structure patent 1,789,949, and it further held that such immunity also applied to the electrolyte patent 1,815,768.

As to the structure patent 1,789,949, this court has already analyzed all of the art of any consequence adduced in the case at bar and the Circuit Court of Appeals had previously found validity as to claims 11 and 19, and this court went further in also finding claim 18 valid and all three of said claims infringed by the Mallory condensers.

As to the electrolyte patent 1,815,768, claims 8, 10, and 11, here in suit, had all been held valid by the Circuit Court of Appeals in the Concourse Case. Defendant in the case at bar has failed to raise a single defense that was not presented in the Concourse Case and again presented more fully in the Mallory Case.

The Circuit Court of Appeals found in the Mallory Case that glycol is the equivalent of glycerin in this art of electrolytic condensers. Glycol is disclosed as such equivalent in patent 1,815,768 here in suit.

By stipulation certain testimony and exhibits in the Mallory Case may be received in evidence with the same force and effect as if the corresponding witnesses had so testified, and the said exhibits had been offered in the present suit.

I will first consider the patent in suit No. 1,815,768, which is herein called the electrolyte patent, claims 8, 10, and 11 of which are in suit.

This patent was upheld in the Concourse Case in the Circuit Court of Appeals of the Second Circuit, 65 F.(2d) 386, which recognized that it was an invention of pioneer character, saying at page 389: "This made a new electrolyte never before used in a dry condenser, one which for the first time produced a film which would resist voltages of five hundred."

The evidence in the case at bar and also in the Concourse Case and the Mallory Case does not show that, prior to Georgiev's invention, any one had taught how to make a practically useful dry electrolytic condenser capable of withstanding 500 volts, either according to Georgiev's, or in any other manner. In fact, prior to Georgiev's invention I am convinced that there did not exist dry electrolytic condensers of more than a small fraction of 500 volts.

Electrolytic condensers of fairly high voltage of the wet type are in the prior art, but the maximum limit appears to be 400 volts.

These prior wet electrolytic condensers were disposed of by the Circuit Court of Appeals in the Concourse Case, even though Zimmerman 1,074,231 had gone so far as to use the same raw ingredients as Georgiev used.

In both the Georgiev patent 1,815,768 and the Zimmerman patent 1,074,231, the ingredients used are the same and are (1) boric acid, (2) an alkali borate, and (3) a polyhydric alcohol. Boric acid is used as such. The preferred alkali borate is ammonium borate either introduced as such or by the combination of boric acid with ammonia water or ammonia gas. The polyhydric alcohol may be glycerin "or any alcohol with two or more hydroxyl radicals such for instance as glycol glucose, etc."

Georgiev's process consists not merely in heating the mixture to cause the solids to enter into solution in the polyhydric alcohol as in the prior art, but the invention involves continuing the heating long after the solution is completed, by boiling said solution, in which operation the boiling point thereof steadily rises and this boiling is continued until the mass reaches a definite predetermined boiling point. The boiling must not, however, be carried too far, for when the boiling point rises above permissive values, the electrolyte loses efficiency and becomes worthless.

Georgiev's simple procedure has practical effects. The experts agree that when a given mixture of raw ingredients, including polyhydric alcohol, boric acid, and ammonia (the latter either combined with some of the boric acid or added in the form of ammonia water), has been heated under conditions permitting the loss of water, regardless whether the heat had been applied slowly for a longer period of time or more vigorously for a shorter period of time, then by the time the product has acquired a given boiling point, a definite amount of water will have been evaporated; the chemical reaction to form glyceryl (or glycol) borate and ammonium glyceryl (or glycol) borate will have progressed to a certain extent; and the electrolyte will have acquired definite characteristics from the standpoint of breakdown voltage and power factor. The higher the boiling point the more water will have passed off, the higher the breakdown voltage, and the higher the power factor.

The method of control taught and claimed by patent 1,815,768 and protected by claims held valid in the Concourse Case is dependable, vital, and unique, as success has not been attained in any other way.

The Georgiev patent formulates the following simple directions for making a 500-volt condenser from the particular formula of ingredients illustratively given: "By the simple expedient of heating the mixture as above set forth to boiling and continuing until the boiling point at atmospheric pressure is about 130 degrees C and holding the solution at this temperature for preferably at least five minutes, the preparation of the electrolyte is completed."

The completion of the boiling operation as disclosed in the patent could be determined by its temperature, or its loss of weight due to the amount of water given off, or by its viscosity, since said three determining characteristics are interrelated for the final electrolyte as obtained from any given formula of raw ingredients.

The extent of the chemical reaction depends on the amount of water driven off.

"Boiling point control" is the easiest of the three interrelated alternative modes of control, and that is why it is used, in practice, in preference to viscosity control or control by measurement of water lost and is specified in the foregoing quotation from the patent and is used by Aerovox — and also by Micamold.

The specification of patent 1,815,768 at its end says: "* * * But reasonably satisfactory results are obtained though the electrolyte in original preparation is boiled for a much less period of time than according to the preferred practice above set forth."

The invention is not limited to any one particular boiling point. This appears not only on the face of the patent, but was also found by the Circuit Court of Appeals in the Concourse Case, where claims 8, 9, 10, and 14 were found to be infringed despite the doubt there expressed by the court that the defendant "ever brought this mixture to a temperature of 130 degrees C."

Patent 1,815,768, therefore covers "boiling point control" of electrolytes of polyhydric alcohol, ammonia, and boric acid, and such control to a boiling point of "about 130 degrees C," is but one specific embodiment of the invention.

It does not seem to me that plaintiff has attempted in the suit at bar to limit the broad term "boiling," as used in claim 10, to the more specific concept of "controlled boiling"; on the contrary the plaintiff maintains that "boiling," as broadly recited in claim 10, is as new and original with Georgiev on the present record, as it was on the Concourse record on which said claim was sustained.

The Circuit Court of Appeals in sustaining broad claim 10, held that boiling, as applied to an otherwise old and known solution of electrolyte ingredients, was not obvious and constitutes invention. The step was not obvious to skilled workers, and that is clearly apparent when you consider the fact that the engineers of the General Electric Company and of the Westinghouse Electric & Manufacturing Company, whose patents are set up in Defendant's Exhibit B as anticipations, did not teach the boiling of an electrolyte solution.

The new attacks on validity in this case do not seem to me to differ materially from the attacks made unsuccessfully in prior litigations, and may be divided into two classes as follows: (1) "New" chemistry; (2) "New" alleged anticipations consisting of:

(a) Edenburg patent, No. 1,924,711, which issued on an application under which Aerovox was licensed before Georgiev made his invention, and which was unsuccessful.

(b) Ruben patent, No. 1,891,207, which was held invalid in the Mallory Case....