Dale Electronics, Inc. v. RCL Electronics, Inc.
| Decision Date | 22 March 1973 |
| Docket Number | Civ. A. No. 3295. |
| Parties | DALE ELECTRONICS, INC. v. R. C. L. ELECTRONICS, INC. |
| Court | U.S. District Court — District of New Hampshire |
COPYRIGHT MATERIAL OMITTED
Martin L. Gross, Sulloway, Hollis, Godfrey & Soden, Concord, Donald H. Zarley, Zarley, McKee & Thomte, Des Moines, Iowa, for plaintiff.
E. Paul Kelly, Sheehan, Phinney, Bass & Green, Manchester, N. H., Arnold Sprung, Burgess, Dinklage & Sprung, New York City, for defendant.
This is a patent infringement case. Plaintiff, Dale Electronics, Inc., is a Nebraska corporation with a principal place of business at Columbus, Nebraska. Defendant, R. C. L. Electronics, Inc., is a New Jersey corporation doing business in Manchester, New Hampshire. Jurisdiction and venue are based on 28 U.S.C. §§ 1338(a) and 1400(b).
The defendant is accused of infringing four patents held by the plaintiff:
1. Number 3,295,090 (hereinafter 090) filed February 26, 1962, and granted December 27, 1966;
2. Number 3,201,855 (hereinafter 855) filed February 21, 1961, and granted August 24, 1965;
3. Number 3,206,704 (hereinafter 704) filed November 19, 1962, and granted September 14, 1965; and
4. Number 201,884 (hereinafter 884) filed July 3, 1963, and granted August 10, 1965.
B. F. Hay is the claimed inventor of patents 090, 855, and 704.
All four patents are concerned with electrical resistors. The first three patents have to do with the method of making electrical resistors. The fourth patent covers an aluminum housing for such resistors. For purposes of this case, electrical resistors consist basically of a core, a wire which is wound around the core, and an insulative material enclosing the wire-wound core with terminal and lead wires protruding from both ends of the core and insulative material. Such a resistor may or may not be enclosed in an aluminum housing.
The validity of the 090 patent is challenged on four grounds:
1. That the prior art made the subject matter obvious, 35 U.S.C. § 103;
2. That the claimed inventor did not invent the subject matter sought to be patented, 35 U.S.C. § 102(f);
3. That the specifications do not meet the requirements of 35 U.S.C. § 112; and
4. Fraud and misrepresentation on the Patent Office.
I address myself first to the question of obviousness in the light of the prior art. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966), is the definitive case in this area. Certain basic factual inquiries are to be made:
Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy. At pages 17-18, 86 S.Ct. at page 694.
The core of the 090 patent is the use of beryllium oxide of at least ninety percent purity as the core of the resistor. The claim states:
The plaintiff was the first to use beryllium oxide as a core in electrical resistors. Its success was almost instantaneous and widespread. There are two reasons for this. One is the fact that beryllium oxide of a high purity, i. e., over ninety percent, has the rare quality of being both an insulator and a conductor. Since the wire-wound core of a resistor, by its very function, builds up heat in the process of resisting the flow of electricity through it, the heat must be dissipated or else the core will burn out. An industry-wide problem was that resistor cores developed "hot spots" due to heat build-up. This weakened the resistor and shortened its life. Since a core made of beryllium oxide disperses the heat over a large area, this reduces or eliminates the "hot spot" problem, keeps the core cooler, and results in it having a longer and more useful life. (Pl. Ex. 123). The heat dissipation properties inherent in beryllium oxide means that beryllium oxide cores can be used effectively at higher temperatures than the traditional ceramic cores that had been in use in the industry.
The second property of a beryllium oxide resistor core that contributed to its widespread demand was that its combined insulative and heat dissipative characteristics permits reduction in its size without materially affecting its capacity. This fitted into the miniaturization revolution in the electronics industry in the 60's.
The use of beryllium oxide as the core of a resistor thus meets the John Deere tests of commercial success and long felt but unsolved needs. But these are only part of the requirements for nonobviousness.
The most important line of inquiry is directed to the prior art.
Two prior art patents bear directly on the issue. The so-called Von Wedel Patent (No. 2,075,876) is dated April 6, 1937. Page 2, lines 47 to 54 of this patent points, although in a wavering fashion, to the use of beryllium oxide for a similar purpose.
I have found that certain compound such as beryllium oxide and aluminium which do not have high electron emission, when mixed with sintering materials, such as the fluorides, for example, strontium fluoride, form admirable insulating coatings for such twisted wires operating at the high temperatures required.
One of the claims of the Lindenblad Patent (No. 2,734,344), dated February 14, 1956, is the use of beryllium oxide as an insulative core in the annular members of an electric cooling apparatus. (Deft. Ex. A-1-36, Col. 6, line 24). There were a number of scientific articles available in the 1950's explaining the properties of beryllium oxide and how it could be used as a combination insulator and conductor with various electrical devices. (Deft. Ex. A-1, 2-12).
The crucial aspect of the prior art, however, lies not in patents and scientific articles, but in the manner in which the inventor, B. F. Hay, came to use beryllium oxide and what prompted him to do so. Mr. Hay's first contact with beryllium oxide as a core substance in electrical resistors resulted from a conversation with a salesman of Frenchtown Porcelain Company which was supplying ceramic cores to the plaintiff. After making a cursory examination of the literature available on beryllium oxide, Mr. Hay ordered cores made of beryllium oxide from Frenchtown, but cancelled the order after the price list became available because the high cost made their use impracticable. It must be pointed out here that up until about 1960, beryllium oxide was too expensive for use in resistors. Part of the reason was due to the fact that its handling posed serious dangers of poisoning. (Dep. of Risk, page 72, Testimony of Altieri). In August of 1961, Hay's attention was again drawn to the use of beryllium oxide as resistor cores at a trade show in San Francisco. As a result of what he saw, he ordered sample cores made of beryllium oxide from the National Beryllia Corporation. The cores were really rods of beryllium oxide of high purity made to plaintiff's size specifications. The inventor had nothing to do with the composition of the rods and how they were manufactured, nor does the patent so claim. Starting in the late 50's, the National Beryllia Corporation published a great deal of material aimed at the electronics industry to promote and expand the use of beryllium oxide. (Deft. Ex. A-1, 58-65). A striking example of what must be termed prior art is an ad by the National Beryllia Corporation in the June, 1959, edition of the trade journal "Ceramic Age." The ad states in part:
Mr. Hay was familiar with at least one of National Beryllia's publications in 1961 describing the thermal conductivity of beryllium oxide as it related to its purity. At about the same time that he received the first core samples from National Beryllia, Hay also received a graph illustrating the thermal conductivity of Beryllia in relation to its beryllium oxide content. (Deft. Ex. A-12). One of the vital claims in the 090 patent is the use of "said beryllium oxide comprising at least 90 percent by weight of said insulative core." (Column 3, lines 39 and 40).
Hay's use of beryllium oxide was the result of a suggestion by a salesman, what he observed at a public trade show, and the published material of the plaintiff's supplier of beryllium oxide cores, National Beryllia Corporation. In short, it was the prior art, consisting of the National Beryllia publications, particularly the graph, that made the use of beryllium oxide cores obvious to Mr. Hay. The fact that the plaintiff was the first one to use beryllium oxide rods as cores in electrical resistors does not mean that such use was not obvious. It merely means that Hay was the first to recognize its obviousness. Plaintiff argues that...
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Dale Electronics, Inc. v. RCL Electronics, Inc.
...being both a good electrical insulator and a good thermal conductor. Herein lies much of our story. The '090 Patent The district court, 356 F.Supp. 1117, characterized the essence of this patent as "the use of beryllium oxide of at least ninety percent purity as the core of the resistor." T......
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Application of Hay, Patent Appeal No. 76-558
...the original patents invalid for failure to comply with 35 U.S.C. § 112, first paragraph.2Dale Electronics, Inc. v. R. C. L. Electronics, Inc., 356 F.Supp. 1117, 178 U.S.P.Q. 262 (D.N.H.), affirmed, 488 F.2d 382, 180 USPQ 225 (CA 1 1973). The district court found that appellant's patents di......