Harries v. Air King Products Co.
| Decision Date | 20 June 1950 |
| Docket Number | No. 210,Docket 21600.,210 |
| Citation | 183 F.2d 158 |
| Parties | HARRIES et al. v. AIR KING PRODUCTS CO., Inc. |
| Court | U.S. Court of Appeals — Second Circuit |
Kenyon & Kenyon, New York City, Theodore S. Kenyon, New York City, Ralph L. Chappell, Joseph C. Sweet, Jr., New York City, of counsel, for appellant.
Spence, Hotchkiss, Parker & Duryee, New York City, Stephen H. Philbin, New York City, for appellee.
Before L. HAND, Chief Judge, and SWAN and CHASE, Circuit Judges.
Judge Galston's full and considered opinion is reported1 and states the positions of both sides, the evidence, and the law. We need add nothing to it by way of prelude to our own discussion; and we shall address ourselves at once to the questions in dispute, presupposing an acquaintance with it. The only issues which we deem it important to consider are validity and infringement, because, although the defendant has also raised the question of laches, and of the general inequity of the plaintiffs' failure to give earlier notice of their intention to sue, it is too clear for debate that both these positions are untenable. The question of validity, as is almost always the case, is enmeshed with that of infringement, and it will be most convenient to begin with it. Obviously before deciding whether the claims are valid, we must decide what they mean: i. e. what was the invention. The plaintiffs say that it consisted of a stream of electrons in which the ratio of length to cross-section is great, combined with an anode, placed at a "critical distance" from the accelerating grid, or "screen." They insist that the absolute length of the stream is not an element of the invention; and that, on the contrary, this is important only when the purpose is to "deflect" the beam, as, for example, when "multiplying frequencies." We hold that the original specifications were for long streams, regardless of the ratio of length to cross-section, because the ratio was a later and unauthorized interpolation into the application as originally filed. This is in accord with Judge Galston's Finding 15 A (1) (a), as to the first and third patents, that the "histories and the patents themselves show that the patents are for tubes having long, jet-type, electron streams"; and with his Finding 20 D(1), as to the second patent, that it "is for a tube having a long jet-type electron stream." Next, we hold that we need not decide whether Judge Galston's ruling was wrong that the claims in suit, so limited, were valid; and we shall, arguendo, assume that they are. Last, we hold that Judge Galston's finding that the defendant's tubes do not infringe the claims, when so interpreted, was not "clearly erroneous." In what follows we shall endeavor to demonstrate in the foregoing order that these three propositions are true.
In their original form the introduction to the specifications of the first and third patents, consisting of seventeen typed pages, did not once mention the ratio of the length of the electron stream to its cross-section. It began by declaring that electron streams might be "arbitrarily divided" into two groups, "deflectable" and "non-deflectable"; and that, although these were "not sharply separated," the "non-deflectable" streams had "short lengths," and the "deflectable jets" were of "comparatively great length in which it has hitherto been impossible to obtain the above useful range of constants." The application declared that it would use the terms in this sense and throughout the introductory remarks it unmistakably confined the invention to "deflectable streams." Nor did any later part of the specifications once so much as allude to the ratio of the length of the streams to their cross-section; all those passages in the specifications as they emerged in which the ratio appears, were introduced on April 1, 1935. (That is true as well of dimensions of the "typical tube" as set forth on page 2, col. 2, lines 37-49.) Shoenberg's patent had already appeared in England on February 4, 1935, and it covered all the defendant's valves here in suit; and unless the change in the specifications was no more than an "amendment" and did not substitute a new "invention," the claims in suit must be confined to absolute length.2 Indeed it is doubtful whether even if the amendment did not substitute a new "invention," it was valid, made as it was after two years, and covering what had become part of the prior art meanwhile and had not been covered before.3 No doubt it is at times hard to say whether amendments are a "departure from or improper addition to the specifications" or have "merely made explicit what was already implicit.4 We have ourselves often recognized this embarrassment;5 but we are satisfied that the expansion in this case was a substitution. The division between "deflectable jets of comparatively great length" and "non-deflectable streams having short lengths," fixed an inescapable limitation upon the invention; not only did it plainly advise the art that the invention did not cover the second type of stream, but it failed even to intimate that in practicing it anything but absolute length need be considered. Even though it were possible that a person skilled in the art might see that it was not absolute length, but the ratio of length to cross-section that was important, we should not be justified in validating such an expansion of the original; it is the sort of artful extrapolation against which courts have over and over set their faces. Moreover, when in addition the matter later included has been originally definitely disclaimed, all doubt should end. A patent must be a certain guide; not a congeries of pregnant suggestions. The claims in suit of the first and third patents must therefore be confined to "deflectable jets of comparatively great length"; "comparatively," that is, to streams which were already known to the art.
The original specifications of the second patent were not quite the same as those of the first, although there too the distinction was made between "deflectable" and "non-deflectable" streams, followed by the declaration that valves had theretofore not been satisfactory "unless the streams employed are comparatively short and `non-deflectable'." That was in February, 1932, but on December 30, 1933, Harries cancelled these introductory remarks, and substituted almost in ipsissimis verbis that part of the original introduction of the first patent which we have just discussed. Indeed, in this case he went a little further, for he interjected on the third page of his proposed substitution that in the prior art it had "been considered necessary to space the electrodes in the tubes as closely as possible: i. e. to use the second type of stream." Then, resuming the language of the first application, he said: "The principal object of the present invention is the production of intensity control of streams of electrons of such configuration as to avoid undesirable interaction between electrodes (as in the case of streams of the first or `deflectable' class) and having characteristics * * * comparable to those * * * of the second or non-deflectable class." Thus the application stood until June 18, 1935, when the introduction, as so amended, was cancelled and for it was substituted the first column of page one of the specifications as issued. This was the first time that the ratio of length to cross-section appeared, and the consequence is the same as in the case of the first and third patents: the claims must be limited to "deflectable streams": i. e. "jets of comparatively great length," as opposed to "streams having short lengths." This was further confirmed by an example (page 2, col. 2, line 45), in which the suggested distance is 1.3 centimeters, which, although shorter than the two or three centimeters of the first patent, was long indeed in comparison with the defendant's tubes.
We do not forget that the original applications of both the first and second patents provide for "focusing" the stream or jet;6 and that did indeed presuppose a limited cross-section. However, there was nothing to indicate that the purpose of "focusing" was more than to turn those electrons into the path between the cathode and the anode which would otherwise escape the anode. That insured a greater electron density than unfocused "jets" would otherwise contain; but it did not intimate that the ratio of length to cross-section was an element of the invention. Moreover, it is not legitimate to use the figures accompanying an application to eke out an invention when the text does not describe the missing element; drawings "are of no avail where there is an entire absence of description of the alleged invention" in the specifications or claims.7 Thus we should not be justified in taking the figures, even those accompanying the original specifications, to indicate that the ratio of length to cross-section was a part of the invention. And indeed in the case at bar it would do no good, if we were to resort to the figures, because, even though one were able to approximate the "critical point" of the anode, one would have no guide to the cross-section of the "jet"; for they tell nothing about that.
Since, as will appear, the defendant has not infringed the claims, limited as they must be, the question arises whether we are compelled to review Judge Galston's conclusion in favor of their validity. In what cases a court may dispose of a patent infringement action upon the issue of non-infringement, recent decisions leave in some doubt, we must own. In Electrical Fittings Corp. v. Thomas & Betts Co., 2 Cir., 100 F.2d 403, we held that, after deciding that a defendant did not infringe a claim, we need not pass upon a finding of the district court that it was valid. This we held because the finding had not been necessary to the judgment and for that reason...
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