CTS Corp. v. Electro Materials Corp. of America

• Decision Date: 26 February 1979
• Docket Number: No. 70 Civ. 433 (JMC).,70 Civ. 433 (JMC).
• Citation: 469 F. Supp. 801,202 USPQ 22
• Parties: CTS CORPORATION, Plaintiff, v. ELECTRO MATERIALS CORP. OF AMERICA, Defendant.
• Court: U.S. District Court — Southern District of New York

469 F. Supp. 801

202 USPQ 22

CTS CORPORATION, Plaintiff, v. ELECTRO MATERIALS CORP. OF AMERICA, Defendant.

No. 70 Civ. 433 (JMC).

United States District Court, S. D. New York.

February 26, 1979.

Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill. (Walther E. Wyss, Warren D. McPhee, Joseph Krieger, Chicago, Ill., of counsel), Gilbert, Segall & Young, New York City (Bernard J. Rosenthal, New York City, of counsel), for plaintiff CTS Corp.

Amster & Rothstein, New York City (Alfred B. Engelberg, Daniel Ebenstein, New York City, of counsel), for defendant Electro Materials Corp. of America.

OPINION

CANNELLA, District Judge:

After a bench trial, the Court grants defendant judgment on its counterclaim and declares Faber, et al., U. S. Patent No. 3,304,199, invalid. 35 U.S.C. §§ 102, 103.

The complaint, charging defendant with patent infringement, is dismissed.

Jurisdiction is based on the federal patent laws. 28 U.S.C. § 1338.

Plaintiff CTS Corporation "CTS" is an Indiana corporation with its principal place of business at Elkhart, Indiana. Defendant Electro Materials Corporation of America "EMCA" is a New York corporation with its principal place of business at Mamaroneck, New York.

On February 14, 1967, U. S. Patent No. 3,304,199 was issued for an "Electrical Resistance Element" hereinafter referred to as the "patent in suit" or the "Faber patent" in the names of William M. Faber, Gaylord L. Francis, Curtis L. Holmes, and Otis F. Boykin, on an application filed November 12, 1963. The entire right, title and interest in and to the Faber patent has been assigned to CTS. Plaintiff brought this lawsuit charging defendant EMCA with infringement of the Faber patent; EMCA counterclaimed for a declaratory judgment that the Faber patent is invalid and, therefore, not infringed.

FACTS

In the 1950's, as a result of the technological advances in the computer industry, the dawning of the space age, and the armament demands of the Korean War, the attention of the scientific world was focused on the field of electronics, as never before. This effort eventually produced, among many other things, a television spectacular featuring American astronauts playing golf on the moon. The plaintiff CTS was, at the time, a major manufacturer of variable resistance controls, products whose principal component is an electrical resistor, a device that resists the flow of electricity.

Purchasers of resistors in the 50's were seeking certain specific characteristics of an electrical resistance material, or element, that would be more suitable for use in the new types of electric circuitry and the extreme environments to which the finished product might be exposed. The desired characteristics included a greater range of resistance values (especially higher resistance); an improved contact surface; greater stability; better predictability and reproducibility in manufacturing; more economical manufacturing methods; and, lower temperature coefficients of resistance "TCR".¹

The Prior Art

In 1957, a father and son team of inventors, both named Thomas M. Place, filed a series of applications for patents with the United States Patent Office. These applications eventually matured into Place, et al., U. S. Patent No. 2,950,995, for an "Electrical Resistance Element," and, Place, et al., U. S. Patent No. 2,950,996, for an "Electrical Resistance Material and Method of Making Same," both issued August 30, 1960. Hereinafter these patents will be referred to as the "Place '995 patent" and the "Place '996 patent" respectively, or, collectively, as the "Place patents." The invention claimed in the Place '995 patent relates to resistors for use in electrical circuits and, in particular, to resistance elements that are formed by applying a layer of particular resistance material to an electrically nonconducting high-temperature-resistant base.

The resistance material is said to consist of finely divided noble metal particles dispersed in a glass layer. The particular composition of the glass is not critical to the practice of the invention, and although the Place '995 patent discloses some glass formulations, it also states that these could be altered by one familiar with the ceramic arts. None of the eleven claims of the Place '995 patent describes a specific glass.

The claims do specify, on the other hand, that the invention requires the use of one of the noble metals. The specification of the Place '995 patent reads, in part, as follows:

The metal or metals used in the mixture are nonreactive and nonoxidizable.

The term nonreactive means that the metal will not react with the other components of the mixture either at room temperature or at the elevated temperatures required to produce the continuous, glassy finished resistance element. The term nonoxidizable means that the metal does not oxidize in a normal atmosphere at such elevated temperatures. Such metals are commonly referred to as noble metals and for the purposes of this specification include gold, silver, palladium, platinum, rhodium and iridium. However, this is not intended as an exclusive listing since other metals are known to have similar properties and may be used in the practice of the invention and are intended to be included in the class of noble metals.

Two rudimentary concepts of chemistry are necessary for an understanding not only of the Place patent specification but also of the other prior art. The first is the Periodic Table of the Elements, a scheme of organizing all known elements in the order of their atomic weights and corresponding atomic numbers, the development of which is generally credited to the Russian scientist Dimitri Ivanovich Mendeleev. Within the table, the various elements are grouped with others of similar electronic and atomic structures and similar chemical properties. See, e. g., The Random House College Dictionary at 428, 834 (1973 ed.). One of these groupings, known as the "noble metals," comprises ruthenium, rhodium, palladium, silver, osmium, iridium, platinum, and gold. See Trial Transcript 111, 542-44.

The other concept is "oxidation." Although it has a more general conventional meaning,² it is used in the pertinent patent specifications and throughout this discussion to mean the chemical combining, or bonding, of oxygen with another substance to form a new substance called an oxide. Oxidation is a common phenomenon. It is well known that many substances will oxidize, that is, combine with oxygen when they are heated in air. Burning is a type of oxidation. Gasoline, for example, a chemical compound of carbon and hydrogen, burns, or oxidizes, when heated sufficiently: its carbon and hydrogen atoms separate and recombine with oxygen atoms to yield, among other things, water (H2O) and carbon dioxide (CO2). Similarly, metals can oxidize. An oxide of a metal is formed when the atoms of the metal combine with atoms of oxygen to form a chemical compound containing atoms of both elements. See Trial Transcript 109-10. The most common example of a metal oxide is rust, a compound of iron and oxygen atoms. Like most chemical compounds, oxides have considerably different properties from those of their constituent elements.

The specification of the Place '995 patent also discloses a method of preparing the resistance material. The glass and noble metals are placed in a mill along with a volatile, or easily evaporated, liquid and are ground until a mixture of the liquid, finely divided particles of glass and finely divided particles of noble metals is produced. There are many suitable volatile liquid carriers, and the choice among these is not critical to the practice of the invention. The mixture is applied to an electrically nonconducting, high-temperature-resistant base to form a layer of the mixture on the base. The mixture may be applied to the base by any suitable means such as brushing, spraying, stenciling, or silk screening. See Trial Transcript 1104-05.

After the base and layer are permitted to dry in air for a short period, they are heated in an oven which may be a conventional ceramic kiln. This stage is called firing, and its purpose is to solidify the powdered glass into a continuous layer with the metal particles uniformly dispersed throughout, without melting the metal particles and without producing bubbles or blisters in the surface of the layer. To achieve this result, a proper firing temperature is critical. Firing too low will not produce a continuous glass layer with a hard smooth surface, while firing too high will cause the glass to bubble or blister, and the metal particles to agglomerate.

The firing procedure is not claimed as an invention, and the specification states that "one skilled in the ceramic art can devise a number of suitable firing procedures." Nonetheless, the Place '995 patent specification does give an example of a suitable firing procedure. The base, coated with a layer of the mixture of powdered noble metal, powdered glass and volatile liquid, is placed in the kiln and the temperature is increased to 1000° F. (approximately 538° C.) at a rate of approximately 400° F. per hour. The temperature is held at 1000° F. for about 30 minutes and then raised to 1490° F. (810° C.) at a rate of about 200° F. per hour. The temperature is maintained at 1490° F. (810° C.) for 30 minutes and the kiln is then allowed to cool to room temperature by normal radiation. When the unit is cool, the layer of resistance material is firmly attached to the base and is in the form of a smooth black glossy layer retaining the exact configuration in which it had been applied to the base. Electrodes and leads may then be applied to the finished resistor for connection into an electrical circuit.

The Place '995 patent specification also discloses an alternative method of preparing the resistance material, one which depends on the solubility of certain chemical compounds containing a noble metal. Noble metals in pure form are soluble in...