Cleeton v. Hewlett-Packard Company

Decision Date30 March 1972
Docket NumberCiv. No. 16092.
Citation343 F. Supp. 1215
PartiesClaude E. CLEETON and Sarah Cleeton Kakaley v. HEWLETT-PACKARD COMPANY.
CourtU.S. District Court — District of Maryland

Michael P. Crocker, Baltimore, Md., and Paul T. O'Neil, Washington, D. C., for plaintiffs.

Benjamin C. Howard, Baltimore, Md., and Harold J. Birch and Edward F. McKie, Jr., Washington, D. C., for defendant.

FRANK A. KAUFMAN, District Judge:

Plaintiffs, the holders of United States Letters Patents No. 2,452,549 (hereinafter '549) and No. 2,471,413 (hereinafter '413), allege infringement of both of said patents by defendant. The '549 patent, issued on November 2, 1948 on an application filed June 24, 1939, discloses a double pulse generator for producing pairs of voltage pulses to be used to test electronic equipment. Claim 13 of that patent, which is the only claim of that patent involved in this proceeding, provides:

In combination, an electron discharge device pulse producing trigger circuit having a stable state and an active state, a connection for supplying a unidirectional current tripping pulse of a predetermined polarity and magnitude to said trigger circuit for changing it from its stable to its active state, an electron discharge device normally biased to cut off, a differentiator circuit coupled between the negative output pulse electrode of said trigger and the input of said discharge device, said differentiator circuit serving to produce a sharp positive pulse from the negative output pulse of said trigger circuit of such magnitude as to overcome the cut off bias on said discharge device and render it momentarily conductive, whereby only the trailing edge of said negative output pulse is effective to produce said sharp positive pulse in said differentiator circuit, and a utilization circuit coupled to an electrode of said discharge device and responsive to a pulse obtained therefrom. Emphasis supplied.

The '413 patent, issued on May 31, 1949 on an application filed May 15, 1940, discloses a pulse code signalling system designed to be used in substitution for the usual Morse code system which employs dots and dashes. In place of a dot, the '413 transmission system employs a single pulse, and in place of a dash, a double pulse is used. At the receiver of the system the single and double pulses are converted into dots and dashes of the Morse code system.1 Once again, by chance, claim 13 is the only claim in the '413 patent which is in issue in this case. That claim states:

In combination, a first electron discharge device trigger circuit having only one degree of electrical stability, said trigger circuit comprising a pair of electrode structures which are interconnected so that one structure is conductive and the other non-conductive in the stable state, and vice versa in the active state, a connection for supplying an input pulse to said circuit for changing it from the stable to the active or unstable state, said circuit having an adjustable element for controlling the time of the active state, a second similar electron discharge device trigger circuit, means including a reactance and a resistor coupling said two trigger circuits together, and an adjustable element in said second trigger circuit for controlling the time of the active state of said second circuit. Emphasis supplied.

The defendant, a California corporation, is alleged to have manufactured and sold eight devices infringing claim 13 of the '549 patent and fourteen devices infringing claim 13 of the '413 patent.

During the trial, three witnesses, Dr. Cleeton himself2 and Drs. Terry B. Hockenberry3 and Ernest H. Krause,4 testified as experts for plaintiffs.5 Defendant relied solely on the testimony of Mr. Donald G. Fink.6 They were the only four witnesses.

Defendant, in addition to denying any infringement, contends that both patents are invalid under section 102 (anticipation), section 103 (obviousness), and section 112 (indefiniteness). Defendant has cited a number of references in support of its position that each of the Cleeton patents is invalid. Those references are considered seriatum herein, followed by a discussion of infringement.


Before determining whether the '413 patent is anticipated by or obvious in the light of the disclosures of the Reeves patent, U.S.Patent No. 2,272,070 (hereinafter, the Reeves '070), a threshold question of whether or not Reeves is available to the defendants as a prior art reference in establishing the defenses of anticipation and/or obviousness must first be resolved.

The application for the patent which was later issued as the Reeves '070 was first filed on November 22, 1939. Dr. Cleeton did not file an application for the '413 until May 15, 1940. Thus, in terms of application filing dates, the Reeves '070 predates the Cleeton '413 and is prima facie a valid prior art reference.

Dr. Cleeton, however, attempts to remove the Reeves '070 as a reference by claiming an invention date for the '413 prior to November 22, 1939, the date of filing of the Reeves '070. In that regard, Dr. Cleeton bears an exceedingly heavy burden of proof, perhaps best expressed by Judge Learned Hand in United Shoe Machine Corp. v. Brooklyn Wood Heel Corp., 77 F.2d 263, 264 (2d Cir. 1935):

When an inventor's date is to be carried back beyond his application, courts regard the effort with great jealousy, and must be persuaded with a certainty which is seldom demanded elsewhere; quite as absolute as in a criminal case, in practice perhaps even more so. Brooks v. Sacks, 81 F. 403 (C.C.A. 1); Dey Time Register Co. v. W. H. Bundy Recording Co., 178 F. 812 (C.C.A. 2); Bearings Co. v. Harris Hardware & Mfg. Co., 299 F. 782 (C.C.A. 2). It makes no difference how the question arises; whether the patentee is carrying back his own invention, or a supposed infringer is carrying back his; the burden is the same as the proof necessary to establish a prior use. * * *7

In order to establish priority of invention over the Reeves '070 application, Dr. Cleeton must prove that he both conceived and reduced to practice the invention claimed in the '413 patent before the critical date of November 22, 1939. Ritter v. Rohm and Haas Co., 271 F.Supp. 313, 319-323 (S.D.N.Y.1967). Cf. Gaiser v. Linder, 253 F.2d 433, 435, 45 C.C.P.A. 846 (1958). In Townsend v. Smith, 36 F.2d 292, 295, 17 C.C.P.A. 647 (1929), the Court of Customs and Patent Appeals wrote:

The conception of the invention consists in the complete performance of the mental part of the inventive act. All that remains to be accomplished in order to perfect the act or instrument belongs to the department of construction, not invention. It is therefore the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice that constitutes an available conception within the meaning of the patent law. A priority of conception is established when the invention is made sufficiently plain to enable those skilled in the art to understand it.

Dr. Cleeton's own testimony,8 his Naval Research Laboratory notebooks9 and the deposition testimony of Mr. Colwell,10 who worked as an assistant to Dr. Cleeton, appear to support the latter's contention that in late January, 1939, Dr. Cleeton had "a definite and permanent idea of the invention expressed in his claims." Ritter v. Rohm and Haas Co., supra, 271 F.Supp. at 323. There is some suggestion in Colwell's testimony that another assistant of Dr. Cleeton, Mr. Hilferty,11 suggested the use of the variable resistors which made the transmitter and the receiver work.12 Nevertheless, defendant does not seem to dispute that Dr. Cleeton conceived the claimed invention prior to November 22, 1939. Defendants do, however, contest Dr. Cleeton's contention that the invention claimed in the '413 patent was reduced to actual practice before that date, i. e., the filing date of the Reeves '070. "The essential inquiry" in determining reduction to practice "is whether the advance in the art represented by the invention . . . was embodied in a workable device that demonstrated that it could do what it was claimed to be capable of doing." Farrand Optical Co. v. United States, 325 F.2d 328, 333 (2d Cir. 1963). The question arises as to whether the circuits claimed in the '413 patent were utilized in a pulse communications system that was tested under actual operating conditions prior to the critical date.

Dr. Cleeton's contention that the circuits claimed in the '413 were embodied in a workable device again rests upon his own testimony,13 his logbooks,14 and Colwell's deposition testimony. Dr. Cleeton testified that on February 3, 1969 he successfully conducted in the laboratory a bench test of pulse communications equipment utilizing the '413 circuits.15 Colwell testified that in late January, 1939, Dr. Cleeton disclosed to him and to Hilferty two circuit diagrams, one a "means of encoding normal Morse code into pulses in which a dot would be represented by a single pulse and a dash by a double pulse" (Plaintiffs' Ex. 52 at 10) and another a means "for receiving single pulses and double pulses and converting them back to dots and dashes corresponding to the International Morse Code" (Plaintiffs' Ex. 52 at 19); and that he (Colwell) then proceeded to construct the circuits. After a series of errors which Colwell stated were the result of his own inexperience, and after several suggestions and changes had been made by Hilferty, Colwell testified that he and Hilferty conducted, on February 2, 1939,16 a laboratory bench test, using transmitting and receiving units connected to each other by a single piece of wire. Colwell further stated that the bench test "proved that the coding and decoding was possible, could be accomplished . . ." (Plaintiffs' Ex. 52 at 57).

Courts faced with the issue of whether laboratory or bench tests, in the absence of field tests,...

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