Forbro Design Corp. v. Raytheon Co.

• Citation: 390 F. Supp. 794,190 USPQ 70
• Decision Date: 07 February 1975
• Docket Number: Civ. A. No. 69-343-F.
• Parties: FORBRO DESIGN CORP. v. RAYTHEON CO.
• Court: U.S. District Court — District of Massachusetts

390 F. Supp. 794

190 USPQ 70

FORBRO DESIGN CORP. v. RAYTHEON CO.

Civ. A. No. 69-343-F.

United States District Court, D. Massachusetts.

February 7, 1975.

COPYRIGHT MATERIAL OMITTED

David A. Rich, Boston, Mass., for plaintiff.

Henry C. Nields, Russell & Nields, Boston, Mass., for defendant.

OPINION

FREEDMAN, District Judge.

This patent infringement matter was tried by the Court without a jury at Springfield, Massachusetts for eight days concluding on June 14, 1974. Subsequently, the parties filed extensive briefs and proposed findings of fact and conclusions of law. After careful consideration of the evidence, stipulations and pertinent authorities, the Court hereinafter enters its findings in accordance with Federal Rule of Civil Procedure 52(a).

The case was brought by Forbro Design Corporation¹ ("Forbro"), a New York corporation, against Raytheon Company ("Raytheon"), a Delaware corporation with a regular place of business in Lexington, Massachusetts, charging infringement of United States Patent No. 3,028,538, which is held by Forbro as assignee. Defendant denies infringement and avers that the patent is invalid for lack of novelty and for obviousness. It further alleges invalidity under 35 U.S.C. § 102(b) because the invention was on sale for more than a year prior to the date of application for the patent. There is an allegation of unenforceability under 35 U.S.C. § 135(c) for failure to file a document with the Patent Office during the course of an Interference in 1962-1965.² Raytheon further claims that the patent is unenforceable for alleged fraud in its procurement and during the Interference. Finally, it charges Forbro with a violation of the antitrust laws in its use of Patent No. 3,028,538.³

Before undertaking the task of determining the validity, vel non, of the highly technical patent in suit, the Court calls to mind the words of Mr. Justice Frankfurter in Marconi v. United States, 320 U.S. 1, 60, 61, 63 S.Ct. 1393, 1421, 87 L.Ed. 1731 (1943) (dissenting in part):

It is an old observation that the training of Anglo-American judges ill fits them to discharge the duties cast upon them by patent legislation. The scientific attainments of a Lord Moulton are perhaps unique in the annals of the English-speaking judiciary. However, so long as the Congress, for the purposes of patentability, makes the determination of originality a judicial function, judges must overcome their scientific incompetence as best they can. Footnote omitted.

I view this sentiment as particularly apposite in the case at bar.

Patent in suit

United States Patent No. 3,028,538 is owned by plaintiff Forbro. The application was filed on August 4, 1958, by Aaron Rosenfeld and Kenneth Kupferberg (a principal of plaintiff corporation), and the patent issued on April 3, 1962. It was thereupon assigned to plaintiff. On June 14, 1966, the name of Rosenberg was deleted as an inventor and Kupferberg now appears as the sole inventor. As originally issued the patent contained seven claims. As will more fully appear later in this opinion, claim 5 has been disclaimed and claims 6 and 7 are not being asserted by plaintiff. Defendant is charged in this case with infringing claims 1-4.

On October 15, 1962, the Patent Office declared an Interference between plaintiff and Hewlett-Packard Company based upon the fact that Hewlett-Packard was making the same claims as those which appear in the patent in suit under an assignment of application No. 737788 by the inventors Bahrs and McWhorter. The Interference was ultimately decided in 1965 only upon claim 6 and plaintiff's assignors were held to have the prior claim.

The patent in suit is entitled "Regulated Output Voltage Power Supply." Preliminarily, it might be well to attempt to understand in a general way the power supply field. Power supplies are old in the electronics art, dating back to the early days of radio. One rudimentary use of the power supply is in a television set. House current is alternating current (ac) voltage; televisions require direct current (dc). The power supply converts this ac voltage to dc voltage. The dc voltage powers the load circuit in the television. Fluctuations in the input of ac voltage or the output dc voltage will not seriously affect the operation of the television.

However, in more sophisticated electronics equipment such as computers, minor fluctuations in the voltage can seriously impair the accuracy of operation. Thus the goals in designing such power supplies are accuracy and stability. The accuracy at any voltage put out by the supply must be in the order of thousandths of a volt in sophisticated electronics gear. And once set at that output voltage, it must remain stable at that setting. Other requirements in addition to accuracy and stability are portability and efficiency.

Regulated power supply circuits have a means for monitoring the source of the dc voltage and the load circuit, so that if either should fluctuate the circuit can compensate for these fluctuations and maintain the constant current into the load circuit. To accomplish the regulation there must be a stable reference voltage, such as a battery, against which to measure the voltage; changes in the balance and the output can then quickly be detected and compensation will take place to ensure that the power being supplied is constant.

The patent in suit is directed to power supplies in which the dc voltage provided by the supply to a load circuit is automatically regulated to remain substantially constant regardless of voltage fluctuations. In view of the relatively short text of the patent in suit, I have appended the patent, including the drawing of one possible embodiment, to this opinion as Appendix "A".

As appears in col. 1, ll. 12-17 of the patent—

. . . the invention is directed to a standardized reference unit and a control amplifier assembled as a plug in unit for connection to an unregulated supply and providing an output voltage always equal to the value set on a voltage control, a feature of the unit being adjustability of the output voltage to zero volts.

It further provides, in col. 1, l. 25 et seq., that—

. . . a single regulated power supply could be used with a diversity of sources of unregulated voltage, . . . by connecting the voltage reference, the control amplifier, the voltage control, and the load into a bridge type reference network.

The descriptive material then goes on to explain a typical embodiment of the circuit as per the drawing.

It is unnecessary to describe each circuit as set out in claims 1 through 4, since these claims appear in full in Appendix "A". The question for the Court, at this stage, is whether the invention as described in the claims is patentable under the standards set forth in 35 U.S.C. §§ 101, 102, 103. For these purposes, I next turn to an examination of the prior art.

Prior art

The prior art, for purposes of this case, includes patented and unpatented circuits hereinafter described, as well as several stipulations of the parties which will be cited from time to time and appear in Appendix "B".

The only prior art cited in the patent was Chase, U.S. Patent No. 2,751,549. Since at trial neither party raised this as pertinent prior art, there is no need to consider it here. There remain for consideration as prior art two circuits, and perhaps a third. The parties agree that U.S. Patent No. 2,840,777 ("DeBlasio") is included in prior art, as well as Kepco Model 2600.⁴ The third circuit cited by defendant as prior art—Kepco Model 5947—raises an issue to which the Court now turns.

Model 5947 was a transistorized power supply with a circuit which was in many respects similar to that of the patent in suit. Defendant's contention is that the two circuits are so close as to raise a defense under 35 U.S.C. § 102(b); i. e. that if the 5947 were sold more than one year prior to the filing of the application for the patent in suit, it is thereby invalid. I will address this "on sale" issue in greater detail at a later point. At this stage the Court finds that the 5947 as a separate design is not a part of the applicable prior art for the circuit of this patent. The two circuits were being developed simultaneously and there is no evidence which would warrant a finding that the circuit of the 5947 was known prior to the time of conception of Patent No. 3,028,538—early March, 1957.

A. DeBlasio

DeBlasio entitles his patent, "Direct Current Power Source", and describes a ". . . regulating method and means wherein vacuum tube voltage-regulator circuits are used to maintain a constant D.C. output voltage across the load, . . ."⁵ col. 1, ll. 17-20. DeBlasio contains many of the same elements as the patent in suit: a reference voltage source, a series pass element, and a control amplifier (which DeBlasio denominates an Input Comparator). Rather than examine the intricate workings of the DeBlasio circuit, the Court will examine the differences between DeBlasio and the patent in suit as noted by plaintiff and the similarities pointed out by defendant.

Plaintiff's witnesses describe three features of Patent No. 3,028,538 which they contend are not described or disclosed by DeBlasio—a common point, a universal low-voltage amplifier, and a small voltage reference:

1. common point: a terminal such as terminal 21 of the patent in suit where the circuit of the series pass element, the reference circuit, one terminal of the load, and a circuit of the control amplifier are inter-connected.

2. universal low-voltage amplifier: the connection of the elements is such that one amplifier can control a broad spectrum of output voltage settings.

3. small voltage reference.

Defendant's position is that DeBlasio does disclose a circuit with the common point. Although neither figure 2 nor figure 4⁶ show such a common point, a reading of col. 6, ll. 14-30⁷ does describe such a circuit. That is, in figures 2 and 4 the pass element is on the positive side...