Alco Standard Corp. v. Tennessee Valley Authority
| Decision Date | 29 May 1981 |
| Docket Number | No. C-77-2513.,C-77-2513. |
| Court | U.S. District Court — Western District of Tennessee |
| Parties | ALCO STANDARD CORPORATION, Plaintiff, v. TENNESSEE VALLEY AUTHORITY, Defendant, v. WESTINGHOUSE ELECTRIC CORPORATION, Third-Party Defendant. |
Rolf O. Stadheim and Gomer Walters, Haight, Hofeldt, Davis & Jambor, Chicago, Ill., W. Michael Richards, Heiskell, Donelson, Bearman, Adams, Williams & Kirsch, Memphis, Tenn., for plaintiff.
John F. Lynch and Alan H. Gordon, Arnold, White & Durkee, Houston, Tex., Robert M. Johnson, Wildman, Harrold, Allen, Dixon & McDonnell, Memphis, Tenn., for third party defendant.
ORDER DENYING SUMMARY JUDGMENT
The plaintiff, an assignee of a patent, has sued for damages based on the alleged infringement of six of its patent claims on an ultrasonic inspection device for turbine rotors. The third party defendant, Westinghouse, has moved for summary judgment under the 35 U.S.C. § 102(b) defense of anticipation based on an alleged description of the invention in a publication more than one year prior to the patent application. The court finds that the article which contained the alleged description does not meet the full, clear and exact standard of description so as to constitute an anticipation of any of plaintiff's patent claims. Therefore the Court denies the motion for summary judgment.
Plaintiff originally filed this action against both the Tennessee Valley Authority (TVA) and Westinghouse Electric Corporation under the patent laws and alleged infringement of the plaintiff's United States Letters Patent Number 3,960,006 for an invention in ultrasonic bore inspection systems. This system is used to detect flaws in large steam turbine rotors found in electric generating plants and was allegedly used by Westinghouse in conducting inspections for TVA. The plaintiff also charged that Westinghouse had infringed its patent in conjunction with others and had committed acts of unfair competition against it. After filing its original answer, the defendant TVA filed an amendment to its answer to assert a crossclaim against its co-defendant Westinghouse for indemnity on the contract of inspection during the performance of which the alleged infringement arose. The defendant Westinghouse then filed its motion to dismiss the claims of the plaintiff against it based on failure to state a claim upon which relief can be granted, improper venue and lack of subject matter jurisdiction. The Honorable Bailey Brown, prior to his elevation to the Sixth Circuit Court of Appeals, issued an order, D.C., 448 F.Supp. 1175, dismissing all claims against the defendant Westinghouse, but leaving intact the claim for indemnity made by TVA against Westinghouse. In his order, Judge Brown ruled that under Section 19 of the Tennessee Valley Authority Act, 16 U.S.C. § 831r, the defendant TVA could use patented inventions subject to the provision of reasonable compensation to the patentee. He then found that the immunity under this section extended to Westinghouse as an independent contractor as it used the patented invention for TVA with the demonstrated authorization or consent of that agency. Thus, Judge Brown concluded that the plaintiff's exclusive remedy, in regard to the defendant's inspections done for TVA, was a claim against TVA for reasonable compensation under Section 19 of the Tennessee Valley Authority Act. Judge Brown also dismissed the claims against Westinghouse, which were based upon alleged infringements involving other entities, due to improper venue under 28 U.S.C. § 1400(b). Due to the dismissal of the patent infringement claims against Westinghouse, Judge Brown dismissed the pendent state claims of unfair competition. Westinghouse, now in its capacity as third party defendant, has filed a motion for summary judgment based on 35 U.S.C. § 102(b) and seeks to have this Court declare the plaintiff's patent invalid as a matter of law.
Section 102(b) provides that a patent may be invalidated if "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States...." Westinghouse contends that the plaintiff's invention was described in a published article, Ultrasonic Inspection of the Nimrod Power Plant Alternator Rotors, by H. C. Brooks, A. W. Brown and A. C. Rankin which appeared in England in September of 1963 (hereinafter referred to as the Nimrod article). The application for the patent was filed on December 3, 1973 and the patent was issued on June 1, 1976.1 The patent consists of thirteen claims but this action is based on the alleged infringement of only claims 1, 2, 3, 7, 8, and 10. Defendant contends that each of these claims embodied in plaintiff's patent are described in the published article. Through the medium of requests for admissions, the plaintiff has admitted that the Nimrod article was published at least as early as January 1, 1972, i. e., more than one year prior to the filing of the patent application which ripened into Patent Number 3,960,006. (Plaintiff's Response to Westinghouse Electric Corporation's Request for Admission No. 7).
Simplistically stated, the patent sets forth a method and apparatus for the inspection of high speed rotors, by the use of sound waves projected through a central bore which extends through the axis of the rotor in order to detect flaws inside the rotor, while it is in operation. The apparatus can inspect the rotor's interior from any position on the length of the central bore as well as upon the bore's radius. Such inspections are essential due to the stress placed upon the rotor by the high revolutions at which it operates. Any flaws in the metal of the rotor can result in the failure or bursting of the rotor under the pressure of the high speed. Through the use of a pulseecho technique, the reflected sound waves pinpoint any defects or flaws of the rotor's interior. The ultrasonic energy may be transmitted in one of three modes: 1) the "longitudinal" mode in which the wave makes contact with the surface mass in a perpendicular or right-angle manner; 2) the "shear" mode in which the wave contacts the surface mass at an oblique angle; and 3) the "surface" mode in which the waves run parallel along the surface mass. Although both the patent and the Nimrod article discuss the use of all three wave modes, the claimed infringements involve usage of only the longitudinal and shear modes in the inspection of rotors. Of the six claims on which the plaintiff bases its allegations of infringement, three describe a method of utilizing ultrasonic waves to inspect the rotors (claims 7, 8, and 10) whereas the other three describe an apparatus to be employed in order to effect these methods of ultrasonic inspection (claims 1, 2, and 3). Each of these claims must be considered separately "for `in contemplation of law, each claim of the patent must be considered as setting forth a complete and independent invention.'" Ballantyne Instruments & Electronics, Inc. v. Wagner, 345 F.2d 670, 674 (6th Cir. 1965) (citation omitted).
Upon attempting to invalidate a patent by a motion for summary judgment, the movant bears a heavy burden. The Patent Code itself declares that 35 U.S.C. § 282. As our distinguished predecessor Judge Bailey Brown has noted, a court must be aware of its duty to "exercise unusual caution" in its consideration of a motion for summary judgment as to the invalidity of a patent. Taylor v. Ford Motor Co., 154 U.S.P.Q. 349, 353 (W.D.Tenn.1967). The Sixth Circuit has declared that:
In appropriate circumstances when the invention is easily understood and there is no need for expert testimony, summary judgment may be a useful tool in cases where the validity of a patent is involved. This court has upheld summary judgments of invalidity.
This tool, however, is to be used sparingly. Tee-Pak, Inc. v. St. Regis Paper Co., 491 F.2d 1193, 1195-96 (6th Cir. 1974) (citations omitted). However, in Tee-Pak the appellate court also cautioned that the evidence must be considered in the light most favorable to the party opposing the motion for summary judgment of invalidity and that courts should be slow to dispose of cases of any complexity on a motion for summary judgment. The Court likewise stressed the statutory presumption of validity of a patent as well as the importance of a patentee being afforded a full and fair opportunity to litigate the validity of its patent. 491 F.2d at 1196. Finally, this Court is mindful of the words of that eminent jurist, Judge Learned Hand, who characterized the question of patent validity to be "as fugitive, impalpable, wayward, and vague a phantom as exists in the whole paraphernalia of legal concepts." Harries v. Air King Products Co., 183 F.2d 158, 162 (2d Cir. 1950).
In the present case the defendant Westinghouse seeks to have this Court declare the plaintiff's patent invalid under the statutory defense of anticipation as codified in 35 U.S.C. § 102(b). Westinghouse contends that the Nimrod article described the six disputed claims of the patent more than one year before the patent application was filed and therefore the patent should never have been issued. It is important to remember that the defense of anticipation harks back to the three criteria necessary to the original grant of a patent: novelty, utility, and invention. Allied Wheel Products, Inc. v. Rude, 206 F.2d 752, 760 (6th Cir. 1953). The defense of anticipation is in actuality an allegation that the claim, when it originally was sought to be patented, lacked novelty. "Novelty does not exist if the...
To continue reading
Request your trial
-
Studiengesellschaft Kohle mbH v. Dart Industries
...Industries, Inc., 501 F.2d 358 (7th Cir.), cert. denied, 419 U.S. 1096, 95 S.Ct. 689, 42 L.Ed.2d 688 (1974); Alco Std. Corp. v. Tenn. Valley Auth., 516 F.Supp. 431 (W.D.Tenn. 1981); 1 Chisum, Patents § 3.02 p. 3-5 (1982) ("The standard for novelty, that is, for "anticipation," is one of str......