Engineering Develop. Lab. v. Radio Corp. of America
| Citation | 153 F.2d 523 |
| Decision Date | 04 February 1946 |
| Docket Number | No. 159.,159. |
| Parties | ENGINEERING DEVELOPMENT LABORATORIES v. RADIO CORPORATION OF AMERICA. |
| Court | United States Courts of Appeals. United States Court of Appeals (2nd Circuit) |
Samuel Ostrolenk, of New York City (Sidney G. Faber, of New York City, of counsel), for appellant.
Stephen H. Philbin, of New York City, for appellee.
Before L. HAND, CLARK, and FRANK, Circuit Judges.
The plaintiff appeals from a judgment, summarily dismissing its complaint for the infringement of a patent issued to one, Cisin, for an "Amplifying Circuit." The only question is whether the claims in suit are invalid because they were introduced into the application more than two years after the subject-matter which they cover had been publicly sold. The disclosure is of an electric circuit which will increase the volume of the electrical pulses produced in a second circuit "in the usual manner by the action of sound waves on the transmitter" (page one, col. two, lines 49, 50). The first circuit contains a "rectifying tube" and an "amplifying tube" in series, set in the usual house circuit, which by hypothesis may carry either direct or alternating current. When a direct current is used, the "rectifying tube" merely allows it to pass through unimpeded. When an alternating current is used the "rectifier" stops, or "strains out" the pulses of current in one direction, letting the current which arrives in the opposite direction pass through to the "amplifier." Between the "rectifier" and the "amplifier" is a "filter," designed to "smooth out" the pulses of the "rectified" current. The anode of the "rectifying tube" contains not only the usual anode "plate," but a "grid" such as is necessary in an "amplifying tube" in order to impress upon the amplifying current the pulses of the current which is to be amplified. In the disclosure this "grid" is connected directly with the input lead of the house circuit to which the "plate" of the anode is connected, so that it is electrically unnecessary. (This connection is apparently what the claims mean when they speak of the "plate" and "grid" as being connected "in multiple.") The specifications do not disclose why the "rectifying" tube should contain the "grid"; but it was explained at the bar that, as such tubes were on the market for use in "amplifying" tubes, they could be made also available for the "rectifier" by the mere expedient of connecting the "grid," as we have described. In parallel with the circuit containing the electrodes are two heating "filaments," one in each tube to heat each cathode, as is well understood; but, since either a direct, or an alternating, current will heat the filaments equally well, there is no need of a "rectifier" in this circuit. In order "to prevent burning out of the filaments" in both tubes, resistances in series are added between the filaments and the source of power, and one of these "may be a variable resistance, if desired" (page one, col. one, lines 50, 51).
The claims in suit may for convenience be divided into two groups: one, consisting of Nos. 3, 4 and 5; the other, of Nos. 11, 12 and 13. The only difference between claim 3 and claims 4 and 5 is that claim 4 includes the resistance just mentioned and claim 5 specifies it with particularity. There is even less difference between claim 11 and claims 12 and 13: all three contain the same elements, the only distinctions being that the details in the description of each are somewhat varied. The disclosure remained the same — with one altogether trivial exception — throughout the proceedings in the Patent Office, and the defendant relies altogether upon amendments made to the claims. These were, it says, both to expand and to narrow their scope, and both invalidated the claims in suit as they finally emerged. The supposed expansions were two: the first was the change from describing the anode of the "rectifying" tube as consisting of "a grid and a plate connected in multiple," to describing it merely as an "anode." The second was that the only claims filed before May, 1936, which mentioned any resistance in the heater circuit — original claims 7, 8 and 9 — spoke of it as a "variable resistance"; while all the claims in suit speak of it merely as a "resistance."
So far as concerns the change in the description of the anode of the "rectifying" tube, we are unable to say on this record that it enlarged the scope of the claims at all, if proper allowance be made for possible equivalents. As we have said, the "grid" had no function; a "rectifier" which left it out would accomplish the same result in substantially the same way; and every patent is entitled to some range of equivalents. Claude Neon Lights Inc. v. E. Machlett & Son, 2 Cir., 36 F.2d 574. Upon a motion for summary judgment it was improper to deny the plaintiff the right to a trial, for we cannot know to what equivalents Cisin's original claims would have been entitled; that is a question which can never be determined until the position of the invention in the whole art has been made plain. In this connection it must be remembered that we are concerned with the meaning of the original claims as they were introduced when all of them described the anode of the "rectifier" in the same words. The equivalents, properly allowable for those words at that time, may have been considerably broader than would now be allowed to them as they appear in claims 1 and 2 as issued. That would be true, because after the claims in suit were added, the contrast in locution between them and claims 1 and 2 might compel us to give claims 1 and 2 a more limited scope than they would have had, had all the original claims been allowed as they read. As we are not prepared to say that the original claims would not have covered an anode without a "grid," we cannot hold that the amendments did more than clarify the meaning of the original claims.
As to the amendment which substituted "resistance" for "variable resistance" in the heater circuit, the disclosure was of a "series of resistances" in that circuit, and the text did not prescribe that any of them should be variable, but only, as we have said, that "one of these resistances may be a variable resistance if desired" (page one, col. one, lines 50, 51). The theory is that since the original claims, which mentioned these resistances uniformly spoke of "variable resistances" they would not have covered fixed "resistances" in the heater circuit, even though these were designed so as to be "sufficient to prevent burning out the filaments" (page one, col. one, lines 48, 49). But once more, we cannot know whether a "resistance," properly designed for the...
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