Hazeltine Research v. AVCO MANUFACTURING CORP.

• Citation: 126 F. Supp. 595
• Decision Date: 29 June 1954
• Docket Number: No. 51 C 1640.,51 C 1640.
• Parties: HAZELTINE RESEARCH, Inc., Plaintiff, v. AVCO MANUFACTURING CORPORATION and The Harry Alter Co., Inc., Defendants.
• Court: U.S. District Court — Northern District of Illinois

126 F. Supp. 595

HAZELTINE RESEARCH, Inc., Plaintiff, v. AVCO MANUFACTURING CORPORATION and The Harry Alter Co., Inc., Defendants.

No. 51 C 1640.

United States District Court N. D. Illinois, E. D.

June 29, 1954.

Laurence B. Dodds and Joseph R. McPhee, Jr., Little Neck, N. Y., M. Hudson Rathburn, Mason, Kolehmainen, Rathburn & Wyss, Chicago, Ill., Philip F. LaFollette, Madison, Wis., for plaintiff.

Floyd H. Crews, Morris Belson, Darby & Darby, New York City, Alden D. Redfield, Charles M. Hogan, and Norman J. O'Malley, Cincinnati, Ohio, Frank J. Naphin, Warren G. Sullivan, Pruitt & Grealis, Chicago, Ill., for defendants.

KNOCH, District Judge.

This is a patent infringement suit based upon letters patent Re. 22,055. The defenses are invalidity of the patent and non-infringement.

The case came on for hearing before the court on the pleadings and the evidence, consisting of oral testimony and documentary proofs. Witnesses were called by the respective parties, whose testimony was transcribed in the record. The court has had the benefit of argument by counsel, both orally and upon briefs.

The court has reviewed the record and briefs of counsel and weighed carefully the arguments presented and considered the authorities advanced by respective counsel in support of their respective claims.

Upon a consideration of the whole case, the court makes the following:

Findings of Fact

1. This is a suit for infringement of claims 5, 6, 7, 9, 10 and 13 of Patent Re. 22,055 — Toulon, assigned to plaintiff Hazeltine Research, Inc., a company engaged in research and development in the radio and television field, against Avco Manufacturing Corporation, a manufacturer of radio and television receivers, and The Harry Alter Co., Inc., its distributor for the Chicago area. The patent in suit is directed to a portion of a broadcast television receiver circuit.

2. Among the problems encountered in the broadcasting and reception of television signals is a most important one which involves maintaining the analysis of the image at the transmitter and the synthesis at the receiver in synchronism, that is, in step or in gear. In commercial electronic television broadcasting, the analysis of the image at the transmitter and the correlative synthesis at the receiver are effected by cathoda-ray tubes. Such a tube develops an extremely fine pencil or beam of electrons, known as a cathode ray, which is deflected back and forth and up and down across the face of the tube, a process called "scanning". The scanning at the transmitter and at the receiver must be maintained in synchronism so that, at every instant, the cathode ray of the picture tube at the receiver is reconstructing the same portion of the transmitted image as is being analyzed by the camera tube at the transmitter. This synchronism is effected by sending out at the end of each scanning line a synchronizing pulse and at the end of each series of lines, constituting one complete image, termed a field, a different type of synchronizing pulse. These pulses are added to the picture signals at the transmitter and must be separated again at the receiver. For convenience, the term "synchronizing signal" is abbreviated as "sync signal". Such separated sync signals are utilized to synchronize relaxation oscillators in the receiver which develop saw-tooth waves for effecting horizontal and vertical scanning of the receiver picture tube. Prior to Toulon's invention, the separated sync pulses were employed to "trigger" each cycle of the line-scanning and field-scanning generators so as accurately to time the initiation of each line and each field, respectively. This type of synchronizing system had the advantage that, under favorable signal conditions, it provided very accurate synchronization. However, Toulon first discovered that it had the disadvantage that, under conditions of noise interference strong relative to the sync signal, synchronization became erratic and unstable. This disadvantage of the triggered synchronizing system was not recognized by other workers in the art at the time Toulon made his invention. At that time, the triggered synchronizing system was considered completely satisfactory and laudatory statements about it were published by the famous television pioneer, Vladimer K. Zworykin. (Proceedings of the Institute of Radio Engineers, December, 1933.)

3. Toulon, a noted French inventor, made the invention of the patent in suit in France, in 1936. The Toulon invention comprises a basically new type of synchronizing system for electronic television receivers. It involves four essential factors: (1) a recognition of the problem, that is, the inadequacy of the triggered synchronizing system under unfavorable noise conditions; (2) a recognition of the fact that one of the known "building blocks" of the electronics art, the phase comparator, had the characteristic of substantial immunity to noise pulses of the same character as the short-duration synchronizing pulses; (3) a modification of the known phase comparator building block, enabling it to work with the particular wave forms found in electronic television receivers; and (4) association with this special phase comparator of a number of other building blocks, individually known but specially selected, to construct a new synchronizing system operating on essentially new principles and achieving essentially new results.

4. The Toulon invention is sufficiently described in Patent Re. 22,055 in suit, the underlying principles of operation of the invention being described in the paragraph beginning at page 2, column 1, line 33; the description of a specific embodiment of the invention as represented in Figure 3 of the drawings being found in the paragraph beginning at page 2, column 2, line 14; and the operation of such specific embodiment of the invention under normal operating conditions being described in the paragraph beginning at page 2, column 2, line 73.

5. Toulon filed an original patent application, completely disclosing his invention, in France on July 8, 1936, this application maturing into French Patent No. 820,138. On July 3, 1937, he filed in the United States Patent Office an application Serial No. 151,807 corresponding to his French application, in accordance with the provisions of that section of the Patent Statutes (35 U.S.C. § 119; 35 U.S.C. § 32, 1946 ed.) implementing the adherence of the United States to the International Convention for the Protection of Industrial Property. The latter application also contained a complete disclosure of the invention illustrated and described in the aforesaid French application and matured into U. S. Patent 2,227,815, dated January 7, 1941.

6. After the issuance of aforesaid original Patent 2,227,815 it was called to Toulon's attention that in several respects the patent was "through error and without any deceptive intention, deemed * * * partly inoperative * * * by reason of a defective specification" and "by reason of the patentee claiming * * * less than he had a right to claim in the patent". Therefore, he authorized the filing of an application under 35 U.S.C. § 251 (35 U.S.C. § 64, 1946 ed.) to reissue his original Patent 2,227,815 to correct such defects, and such application was duly filed under Serial No. 390,212 and duly issued March 24, 1942 as Patent Re. 22,055, in suit.

7. Simultaneously with his execution of the reissue application papers as aforesaid, Toulon assigned his original Patent 2,227,815 to Hazeltine Corporation, plaintiff's predecessor in title, which had previously entered into a contingent purchase contract with Langley, Toulon's agent in the United States.

8. In brief, what Toulon disclosed in his original Patent 2,227,815 as his invention and sought to patent and what is described and claimed in his Patent Re. 22,055, comprises the following essential features:

(a) — a system for precisely controlling the synchronization of an electronic television receiver from a series of received synchronizing pulses of short duration relative to their period,

(b) — for substantially eliminating the deleterious effects of noise pulses similar in nature to the synchronizing pulses and the effects of momentary synchronizing signal interruption, comprising,

(c) — a circuit for supplying the periodic synchronizing-signal pulses to the system,

(d) — a relaxation oscillator which in the absence of control has substantially the same average frequency as these synchronizing signal pulses,

(e) — a phase-comparison circuit for deriving a periodic wave dependent in wave form upon the phase difference between the synchronizing signal pulses and the output wave of the oscillator,

(f) — a rectifier for developing from this derived periodic wave a unidirectional frequency-correcting control voltage,

(g) — specifically in association with a circuit of long time constant relative to the period of the signal pulses,

(h) — a circuit for utilizing this unidirectional control voltage to control the instantaneous frequency, and thus the phase, of the relaxation oscillator,

(i) — and a circuit for developing from the output of the relaxation oscillator a saw-tooth wave for scanning.

9. Since 1947 the Toulon invention, as described, has gone into widespread commercial use and at the present time is embodied in substantially all commercial television receivers. With the exception of Defendant Avco Mfg. Corp., all major manufacturers of television receivers, accounting for more than ninety per cent of current commercial production, have recognized the patent in suit by operating under license from plaintiff with respect to such patent, as well as others of plaintiff's patents. Plaintiff previously brought an infringement action in this Court on this same Toulon patent against a wholly owned subsidiary of Philco Corporation, one of the largest producers of television receivers in the country. Shortly before the date set for trial of the Philco case, ...