Leesona Corp. v. United States

• Decision Date: 28 January 1976
• Docket Number: No. 130-70.,130-70.
• Citation: 530 F.2d 896
• Parties: LEESONA CORPORATION v. The UNITED STATES.
• Court: U.S. Claims Court

530 F.2d 896

LEESONA CORPORATION v. The UNITED STATES.

No. 130-70.

United States Court of Claims.

January 28, 1976.

COPYRIGHT MATERIAL OMITTED

COPYRIGHT MATERIAL OMITTED

Alfred W. Breiner, Arlington, Va., atty. of record, for plaintiff. Robert F. Conrad and Breiner, Ramik & Brown, Arlington, Va., of counsel.

A. David Spevack, Washington, D.C., with whom was Asst. Atty. Gen. Rex E. Lee, Washington, D.C., for defendant. W. Boswell Childs, Arlington, Va., of counsel.

Before SKELTON, NICHOLS and KASHIWA, Judges.

OPINION

PER CURIAM:

This case comes before the court on exceptions by the parties to the recommended decision filed February 27, 1975, by former Trial Judge Hal D. Cooper (since resigned), pursuant to Rule 134(h), having been considered on the briefs and oral argument of counsel. Since the court agrees with the trial judge's recommended decision, as hereinafter set forth, it hereby affirms and adopts the same as the basis for its judgment in this case. It is therefore concluded: (a) that claims re Patent No. 3,419,900 (claims 4 and 7), Patent No. 3,276,909 (claim 9) and Patent No. 3,436,270 (claims 1, 2, 3, 5-8, 10, 16 and 17) are valid and infringed and defendant has no license thereunder; (b) claims re Patent No. 3,436,270 (claim 19), Patent No. 3,553,024 (claims 1, 3, 4, 6 and 11) and Patent No. 3,378,406 (claims 1, 3, 8 and 9) are invalid; (c) claims 12, 15 and 16 of Patent No. 3,438,815 are not infringed by defendant; and (d) defendant is licensed under claims 1, 2, 3, 8 and 9 of Patent No. 3,531,327. Accordingly, plaintiff is entitled to recover reasonable and entire compensation in accordance with this opinion and judgment is entered for plaintiff therefor, the extent of which will be determined in further proceedings pursuant to Rule 131.

OPINION OF TRIAL JUDGE

COOPER, Trial Judge:

Contending that seven of its patents have been infringed, plaintiff seeks reasonable and entire compensation under 28 U.S.C. § 1498 for defendant's procurement of a metal/air battery designated the BB-626( )/U. Defendant presents its usual array of defenses, attacking validity of each patent on a multiplicity of grounds, asserting there is no infringement of most of the patents, and alleging a license running to defendant under all of the patents.

For the reasons hereinafter stated, it is concluded that the claims at issue in patents Nos. 3,276,909, 3,419,900, and 3,436,270 (except claim 19) are valid and infringed, and that defendant has no license thereunder. It is further concluded that the claims at issue in patents Nos. 3,553,024 and 3,378,406, and claim 19 in No. 3,436,270 are invalid; that patent No. 3,438,815 is not infringed; and that patent No. 3,531,327 is subject to a license to defendant.

The subject matter in this case pertains to batteries or, stated in more technical terms, electrochemical devices for producing electrical energy through chemical processes. These devices employ a pair of electrodes (an anode and a cathode), a fuel to be consumed, and an electrolyte as essential components in the production of electrical energy. In some batteries, flashlight batteries being but one example, all reactants, including the fuel which is a metal that is a part of one of the electrodes, are contained in the battery package. In other more sophisticated types of batteries (sometimes called fuel cells),¹ the reactants, including the fuel which may be a gas such as hydrogen, are supplied continuously from an external source. In either case, it is the chemical process of fuel oxidation that produces the electrons for the current in an external circuit.

The fuel cell type of battery is usually distinguished from other batteries in that the fuel cell electrode is merely a situs for the chemical reaction and is not consumed by that reaction. As a result, the useful life of a fuel cell is not normally measured in terms of its electrode life. The more conventional batteries, on the other hand, are designed to have one or both of the electrodes take an active part in the reaction so that at least one of the electrodes is consumed by the reaction. When the electrode is consumed, either the battery is thrown away or it is electrically recharged. Historically, throwaway batteries have been known as "primary" batteries while the rechargeable type has been designated a "secondary" battery.

The metal/air batteries accused to infringe are a hybrid. As with conventional batteries, the anode of a metal/air battery contains the fuel and is consumed by the chemical reaction. The cathode, however, is not consumable and, as in a fuel cell, the reactant, oxygen, is supplied from the ambient air on a continuous basis. Further, although the battery is not electrically rechargeable and, hence, is of the primary type, it is designed for rapid mechanical replacement of the consumed electrode so it is considered to be mechanically rechargeable.

Of the patents in suit, the '909, '900, '815, and '024 patents are concerned with electrode structures. The '270, '406, and '327 patents are directed to a metal/air battery configuration and the mechanical rechargeability of that battery.

Elmore and Tanner Patent No. 3,419,900

This patent discloses an electrode structure comprising a catalytic layer made from a uniform admixture of a fluorocarbon polymer and a catalytic metal powder. The fluorocarbon is preferably polytetrafluoroethylene (sometimes referred to either as PTFE or by du Pont's trademark Teflon). This mixture is carried by a suitable current collector such as a silver screen or a porous carbon block with the electrolyte being on one side of the catalytic layer and a gaseous reactant on the other.

Claim 4, the only independent claim asserted to be infringed,² is as follows:

An electrochemical cell for the direct generation of electrical energy comprising an anode, a cathode, and an electrolyte, said electrochemical cell being constructed and arranged to provide a space between said anode and cathode and said space containing said electrolyte, at least one of said anode and cathode being a nonconsumable, gas-consuming electrode comprising a catalytic layer containing a substantially uniform admixture of metal containing electrocatalyst particles and a fluorocarbon polymer, said catalytic layer being exposed to the electrolyte of the cell and having a porosity sufficient to permit diffusion of gases into said catalytic layer.

All of the elements of the claim are concededly old except for the use of "a substantially uniform admixture of metal containing electrocatalyst particles and a fluorocarbon polymer" as a catalytic layer. The evidence is that Elmore and Tanner were the first to use this combination of materials in an electrode for an electrochemical cell.

At the outset, defendant contends that the specification is defective within the meaning of 35 U.S.C. § 112 because it does not specify the critical ratio of the catalyst to the fluorocarbon. Although defendant is correct that precise recipes are not set out in the specification, a patent is directed to those skilled in the art and need only be in sufficient detail to enable them to practice the invention. Trio Process Corp. v. L. Goldstein's Sons, 461 F.2d 66, 74 (3d Cir. 1972), cert. denied, 409 U.S. 997, 93 S.Ct. 319, 34 L.Ed.2d 262; Gray Co. v. Spee-Flo Manufacturing Corp., 361 F.2d 489, 493 (5th Cir. 1966). That requirement is satisfied here for it is clear from the evidence that a very wide range of ratios may be employed, depending on the particular desired use. The basic controlling consideration, as those in the art would readily recognize, is that an excess of polymer will adversely affect conductivity. As to specific ratios, the testimony of plaintiff's witnesses, Dr. Frysinger and Dr. Giner, and defendant's witnesses, Dr. Weissman and Mr. Moran, establishes that one of ordinary skill in the art would have no difficulty at all in selecting workable proportions in light of the patent disclosure.

Defendant next contends that the combination of claim 4 is anticipated by Niedrach et al Patent No. 3,297,484. This defense is premised on the contention that claim 4 is not entitled to the original filing date of March 4, 1960, but is entitled only to the December 22, 1966 date on which a continuation-in-part application was filed. Yet, each and every term of claim 4 is supported by, and was plainly disclosed in, the original application filed in 1960. Also from the time the first application was filed, Elmore and Tanner consistently presented claims to a new electrode composition consisting of a mixture of fluorocarbon and catalyst particles. In light of these facts, claim 4 is entitled to the filing date of March 4, 1960. Pursche v. Atlas Scraper & Engineering Co., 300 F.2d 467 (9th Cir. 1961), cert. denied, 371 U.S. 911, 83 S.Ct. 251, 9 L.Ed.2d 170 (1962); Kollsman v. Ladd, 226 F.Supp. 186 (D.D.C.1964). Since the Niedrach patent has a filing date of May 8, 1961, it is not a reference against this claim.³

The principal defense asserted by defendant is that of obviousness under 35 U.S.C. § 103. This defense requires consideration of the scope and content of the prior art in 1958 when Elmore and Tanner made their invention, and a determination of whether the differences between that art and the claims in issue would have been obvious to one of ordinary skill in the art. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

Defendant relies mainly on Berl Patent No. 2,275,281, Winckler et al Patent No. 2,641,623, Witherspoon et al publication entitled "The Oxygen Electrode,"⁴ and the argument that the use of Teflon was a mere substitution of one plastic for another.

In considering this defense, it is necessary to place the prior art in context. Prior to 1958, a major problem with air-or gas-breathing electrodes had been the need to develop an electrode that would be permeable to the gas, but not so porous as to permit the electrolyte...