General Instrument Corporation v. Hughes Aircraft Co., 6999.
| Decision Date | 18 July 1968 |
| Docket Number | No. 6999.,6999. |
| Citation | 399 F.2d 373 |
| Parties | GENERAL INSTRUMENT CORPORATION, Defendant, Appellant, v. HUGHES AIRCRAFT COMPANY, Plaintiff, Appellee. |
| Court | U.S. Court of Appeals — First Circuit |
W. Houston Kenyon, Jr., New York City, with whom Harold James, Theodore S. Kenyon, Kenyon & Kenyon, New York City, and Choate, Hall & Stewart, Boston, Mass., were on brief, for appellant.
Dugald S. McDougall, Chicago, Ill., with whom Benjamin A. Smith, Providence, R. I., was on brief, for appellee.
Before ALDRICH, Chief Judge, McENTEE and COFFIN, Circuit Judges.
Defendant appeals from a judgment of the U. S. District Court for the District of Rhode Island declaring plaintiff's two patents, North and Barnes, valid and infringed. While both patents relate to semiconductor devices, the issues as to each warrant separate discussion.
The North patent (No. 2,694,168, applied for March 31, 1950 by Harper Q. North and Justice N. Carman, Jr., issued November 9, 1954) describes a glass-sealed housing containing a semiconductor crystal1 connected on one side with a terminal lead wire and on the other with a metal point (a "cat whisker") which is in turn affixed to another terminal wire. The assembly so housed is a diode, or simple semiconductor rectifier with two terminals for use in electrical circuits.2
The patent proceedings occupied almost five years. Of 106 claims filed, 61 were allowed. Of the 61 allowed, only numbers 60 and 61 are claimed to have been infringed. These claims entered the proceedings for the first time on March 9, 1954, as claims 100-104. After rejection, claims 102 and 103 were rewritten as 105 and 106 and finally accepted as 60 and 61. For present purposes we shall confine our attention, as did the district court, to claim 60. It was this claim, concededly infringed by defendant, which was held valid.
It seems to us particularly important that we not only ask the right questions but ask them in the proper sequence. That sequence would appear to be: (1) what is the invention described by claim 60; (2) does such invention enjoy whatever protection is afforded by the remainder of the North patent; (3) if it does, is the North patent valid against charges of anticipation and obviousness; (4) if so, have plaintiff's rights been limited by estoppel or laches; and (5) even if otherwise valid and not vulnerable to laches, does a newly added portion of the record raise an issue whether or not the patent is invalidated by plaintiff's application for a similar foreign patent without securing a statutorily required license?
The district court defined what it deemed the invention at issue and proceeded to answer questions 2, 3, and 4 favorably to plaintiff. It had no occasion to deal with the fifth issue, which, as we shall see, infra, is one of several significant questions arising from stipulated additions to the record made after the judgment below. Differing with the district court in its answer to the second question, we have no occasion to consider the others.
The definition of the invention described by claim 60 requires almost equal attention to what is and what is not involved. We reproduce in the margin claim 60, as presented in appellant's brief (with the exception of the identifying numbers, which are ours) to distinguish structural from dimensional features.3
Paraphrased for convenience, we note the following six structural and four dimensional elements:
Structural Dimensional
1. Hollow glass uniform tubular 1. Maximum width of container
container. "of the order of one tenth
inch."
2. Ends of container "solid" and
"massive". 2. Ends having substantially
same width as rest of container
3. Two "one piece ductile lead
wires", each entering end
section from outside, hermetically 3. Each wire to lead through
sealed to end section glass end section for a distance
through which it leads, and "at least 1.5 times" the diameter
of the lead wire
4. Each terminating within the
inner chamber of the glass 4. The ratio of the width of the
container. end sections to the diameter of
the lead wires to be "at least
of the order of" 5 to 1
5. A semiconductor crystal "affixed
to, supported by, and
electrically connected to" one
wire
6. And a cat whisker connecting
crystal and second wire
The district court found that the dimensional relationships, rather than being surplusage as plaintiff continues to argue, are "critical * * * contribute in a very significant degree to the commercial success * * * and do define the invention." 275 F.Supp. 961, 968 (D.R.I.1967). This finding takes on added strength from the fact, not known by the district court at the time of its decision, that plaintiff, one day before issuance of the North patent, had filed for a Patent of Addition in England, seeking to add to the parent British patent (essentially North, without claims 60 and 61) the subject matter of claims 60 and 61. In justifying the Patent of Addition, plaintiff reiterated textually the critical nature of the third and fourth dimensions noted in our schema.4
We therefore accept the district court's finding that dimensions are critical. While this defines the scope of claim 60, it is also necessary to define what is not included. The district court appropriately noted that such parts of the North patent as referred to a crystal "buried in glass" were not involved in claim 60. Id. at 970. What it did not apparently recognize was that the technique of sealing a metal wire to a glass enclosure by means of, first, encompassing the wire with a bead of glass and, second, fusing the beaded lead with the surrounding glass at a conveniently low temperature was not part of claim 60 and had in fact been surrendered by plaintiff with the cancellation of its original claim 55.5 Notwithstanding this, the court makes much of "glass to glass sealing" and the fact that "North used beaded leads fused into the ends of a tubular glass envelope and this resulted in the great strength and ability to withstand the stresses of lead beading and low-temperature glass to glass final sealing." Id. at 972. While it is not clear to us how central a role this factor played in the district court's judgment, we shall assume that it was surplusage. Otherwise, we would have to reverse on the ground that the claim in question had been upheld because of a feature which it did not embrace.6
Coming, then, to what claim 60 covers — and no more, we face the threshold question: are the structural elements and dimensions of claim 60 implicit in and supported by the specifications of the North patent as originally filed? Defendant, in brief and argument, treats this as breaking down into three questions: (a) are the requirements for exact description of 35 U.S.C. § 112 complied with; (b) can claim 60 be read as not introducing new matter; and (c) does the public use (beginning in January 1953) of the concepts articulated in claim 60 reflect the first disclosures of North or does such use disclose features which were not formally covered until claim 60 was subsequently applied for?
We are drawn to the conclusion that claim 60 is invalid in that it is not linked integrally or essentially enough with what had been set forth in the prior disclosures of the North patent. Since what was old did not describe what was added, the latter must be considered new matter. Harries v. Air King Products Co., 183 F.2d 158 (2d Cir. 1950). And since commercial sales of the "Hughes commercial diode", which embodied all the "new matter" embraced in claim 60, had commenced over a year prior to the filing thereof the claim fails for "late claiming". 35 U.S.C. § 102(b); Muncie Gear Works, Inc. v. Outboard Marine & Mfg. Co., 315 U.S. 759, 62 S.Ct. 865, 86 L.Ed. 1171 (1942).
Our conclusion rests in part on the interpretation of words used in the North patent which we have felt compelled to make and which differs from that adopted by the district court, in part on our view that claim 60 is not merely a narrower version of broader original claims, and in part on the significance of the nearly contemporaneous filing in Great Britain for the Patent of Addition covering substantially the identical ground of claim 60.
Of the six structural and four dimensional elements we have identified in claim 60, we pass as having no significance here structural items 1, 2,7 and 6, and dimension 2. On each of the remaining items, we differ from the findings below — not on credibility of witnesses but in the interpretation of patent documents. We do not say that each difference indicates error which would alone be reversible, but only that the aggregation of these six differences, together with the remaining grounds relied on, compel the result.
Commencing with the findings on structural elements, we note that the court below concluded as to element 3 that two wires, 10 and 12,8 of differing diameters and composition, constituted when welded together, a "one piece structure". But claim 60 describes two "one piece ductile lead wires". If a two-wire "structure" can qualify as a "one piece wire", we cannot imagine what a "two piece wire" might be. What confirms us in our view is data not available to the district court. In seeking its foreign Patent of Addition, plaintiff referred to a defect in its parent patent (i. e., the British patent identical to North) in calling for "composite leads * * * of Dumet wire * * * welded to thicker copper wires", the weld resulting in a weak point. It therefore sought "one piece...
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