ALLEGHENY DROP FORGE COMPANY v. Portec, Inc.

• Decision Date: 14 February 1974
• Docket Number: Civ. A. No. 72-558.
• Citation: 370 F. Supp. 673
• Parties: ALLEGHENY DROP FORGE COMPANY, Plaintiff, v. PORTEC, INC., Defendant.
• Court: U.S. District Court — Eastern District of Pennsylvania

370 F. Supp. 673

ALLEGHENY DROP FORGE COMPANY, Plaintiff, v. PORTEC, INC., Defendant.

Civ. A. No. 72-558.

United States District Court, W. D. Pennsylvania.

February 14, 1974.

John L. Spiegel, Plowman & Spiegel, Stanley J. Price, Jr., Pittsburgh, Pa., for plaintiff.

Hyman F. Glass, Alexandria, Va., J. Paul Martha, Reed, Smith, Shaw & McClay, Pittsburgh, Pa., for defendant.

OPINION

DUMBAULD, District Judge.

Plaintiff's complaint seeks a declaratory judgment (under 28 U.S.C. § 2201) that two patents of which defendant is exclusive licensee are invalid. The Court has jurisdiction of actions relating to patents under 28 U.S.C. § 1338(a), and the technique of seeking a declaratory judgment of invalidity rather than awaiting an infringement suit by defendant is a recognized procedure. Dewey & Almy Chemical Co. v. Anode, Inc., 137 F.2d 68, 69-70 (C.C.A. 3, 1943); Thiokol Chemical Corp. v. Burlington Industries, Inc., 448 F.2d 1328, 1331 (C.A. 3, 1971). Before us for disposition is plaintiff's motion for summary judgment, based upon three grounds: (1) obviousness under 35 U.S.C. § 103;¹ (2) prior filing in a foreign country contrary to 35 U.S.C. §§ 184 and 185;² (3) unclean hands, it being alleged that defendant withdrew an interference pending before the patent office in order to "cover up" (to use a phrase popular at this moment of time) prior art which would have prevented issuance of the patents involved, and thereby to facilitate their issuance.

In all patent cases certain basic principles must be kept in mind.

It must never be forgotten that the primary policy of the patent laws is to promote invention for the benefit of the public. Private gain is secondary. Pennock v. Dialogue, 2 Pet. 1, 7 L.Ed. 327 (1829); Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510-511, 37 S.Ct. 416, 61 L.Ed. 871 (1917); Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661, 665, 64 S.Ct. 268, 88 L.Ed. 376 (1944); Mazer v. Stein, 347 U.S. 201, 219, 74 S. Ct. 460, 98 L.Ed. 630 (1954); Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 330-331, 65 S.Ct. 1143, 89 L. Ed. 1644 (1945); Dumbauld, The Constitution of the United States (1964) 153-154. A valid patent must add to, not detract from, the state of the prior art. As stated in Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162 (1950): "The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former resources freely available to skilled artisans." Hence it is a public service to strike down an invalid patent, which is in truth a trespass upon the public domain, as Justice Douglas observed in Automatic Radio Mfg. Co. v. Hazeltine Research, 339 U.S. 827, 840, 70 S.Ct. 894, 94 L.Ed. 1312 (1950).

The very power of Congress to grant a patent is limited and delineated by the purpose proclaimed in the constitutional grant itself. The power is one "To promote the Progress of Science and useful Arts"; the "exclusive Right" conferred by the patent is merely the means of accomplishing the intended result. Ibid., 836-837, 70 S.Ct. 899; Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 154-156, 71 S.Ct. 127, 95 L.Ed. 162 (1950); U. S. Const. Art. I, sec. 8, cl. 8.

"It follows from the language used in the Constitution, limiting patentability to inventions which in fact contribute to the `progress' of science, that every case involving the validity of a patent presents a constitutional question. Hence the Supreme Court of the United States is often required to devote its time and effort to determinations involving minute questions of fact with respect to the patentability of trivial gadgets."³

It follows also, from these basic policies, that commercial success alone, without the requisite invention and novelty, will not establish patentability. Great A. & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 153, 71 S.Ct. 127, 95 L.Ed. 162 (1950); Anderson's Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 59, 61, 90 S.Ct. 305, 24 L.Ed.2d 258 (1969). It further follows that the mere discovery of a phenomenon or law of nature is not patentable. Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127, 130, 68 S.Ct. 440, 92 L.Ed. 588 (1948).

It must also be borne in mind that under the 1952 amendment the requirement of novelty is no longer to be interpreted, as in the days of Thurman Arnold, as requiring a "flash of genius."⁴ 35 U.S.C. § 103 now states "Patentability shall not be negatived by the manner in which the invention was made." A computerized search, or mere methodical exhaustion of alternatives, might now suffice. Cf. Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 335, 65 S.Ct. 1143, 89 L.Ed. 1644 (1945). An accidental discovery is now patentable. Gagnier Fibre Products Co. v. Fourslides, Inc., 112 F.Supp. 926, 929 (E.D.Mich.S.D., 1953). At the same time, 35 U.S.C. § 103, as interpreted in the leading case of Graham v. John Deere Co., 383 U.S. 1, 16-17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), added a new requirement of "non-obviousness." This requirement, it seems clear, did not lower the level of inventiveness required. If anything, it increased it by making a statutory requisite of criteria theretofore embodied only in judicial decisions. 383 U.S. at 17, 86 S.Ct. 684.

It is true, of course, that the 1952 legislation was designed to lessen the hostility to patents which led to Justice Robert H. Jackson's quip that "the only patent that is valid is one which this Court has not been able to get its hands on." Jungerson v. Ostby & Barton Co., 335 U.S. 560, 573, 69 S.Ct. 269, 274, 93 L.Ed. 235 (1949); Reiner v. I. Leon Co., 285 F.2d 501, 503 (C.A. 2, 1960) per Learned Hand. Nevertheless, the requirement of "non-obviousness" was an additional statutory hurdle to the inventor. He was made chargeable with what he should have known, under the prior art, rather than merely with what was explicitly disclosed by the inventions of his predecessors in the art. See Lyon v. Bausch & Lomb Optical Co., 224 F.2d 530, 535-536 (C.A. 2, 1955) per L. Hand. The pre-1952 statutory criterion ("new and useful") now appears in 35 U.S.C. §§ 101 and 102.

In the light of these doctrines we proceed to examine the facts shown by the record in the case at bar. We turn first to the sedes materiae, the terms of the patents themselves which are involved in the instant controversy.

Patent No. 3,100,080 (Ex. 1) was issued on August 3, 1963, pursuant to an application filed on May 27, 1957, on behalf of René A. Fiechter, assignor to American Railroad Curvelining Corporation. It is entitled "Railway Rail Joint." Eleven claims were allowed.

Patent No. 3,139,364 (Ex. 27) was issued on June 30, 1964, pursuant to an application filed on November 3, 1958, by the same inventor and assignee. It is entitled "Method of Making Railway Track." Two claims were allowed.

Defendant has received an exclusive license to these patents, and on December 27, 1971, wrote to plaintiff, charging plaintiff with infringement but offering a non-exclusive license thereunder (Ex. 37, attached to plaintiff's brief, which has been ordered to be filed).

The file wrapper of No. 3,100,080 (Ex. 2) shows that the original application was for "Railway Rail Joint and Method of Forming It" and contained 15 claims. Nos. 12-15 related to method, and during the course of prosecution were withdrawn on June 20, 1961. They were elaborated and resubmitted in the continuation-in-part application containing 15 claims which led to patent No. 3,139,364 (File wrapper of No. 3,139,364, Ex. 29). For simplicity we shall therefore hereinafter refer to No. 3,100,080 as the "joint" patent and No. 3,139,364 as the "method" patent.

The general purpose of the joint patent is to provide a continuous rail surface (previously obtainable by welding) but which will readily permit the replacement of individual rails. Accordingly the rail ends are bonded together by a suitable bonding agent (a thermo-setting⁵ synthetic resin such as epoxy) and the rails may also be bonded to "fish plates" (also called side plates, splice plates, or joint bars, which are parallel to the rails and before welded rails would be bolted together to hold the rail ends in place) or to "tie plates" which go between the rails and crossties. The tensile strength of the bonding agent is such that rails may readily be pulled apart for replacement, but its other properties are such that the joint will withstand the mechanical strains of train movement and fluctuations of weather and temperature.

More specifically, the basic feature of the joint patent is set forth in Claim No. 1:

A railroad rail joint comprising rail end portions and at least one additional metallic element having a surface complementary to at least a substantial proportion of the lateral surfaces of said rail end portions, said end portions and said element being substantially rigidly bonded together by the interposition throughout at least a major proportion of said complementary surfaces of a thermo-setting synthetic resin bonding agent.⁶

The method patent in Claim No. 2 provides for "curing" the thermosetting filling material to harden it, holding the metallic elements in place "by clamping means" until the bonding material has hardened. The clamping device is then removed, having been "pre-treated with a non-sticking agent, such as a silicone."

Claim No. 1 provides for more rapid curing by use of heat. It also covers an "interference fit" produced by differential heating of two interlocking metal elements, so that the cooler fish plates will expand less than the rails and produce a tight fit when both are then heated uniformly to a higher temperature sufficient to harden the paste.

The rail joints may be made electrically conducting by placing the surfaces in contact; or may be made non-conducting by inserting...