Lowell v. Triplett

• Citation: 77 F.2d 556
• Decision Date: 03 June 1935
• Docket Number: No. 3816.,3816.
• Parties: LOWELL et al. v. TRIPLETT et al.
• Court: United States Courts of Appeals. United States Court of Appeals (4th Circuit)

77 F.2d 556 (1935)

LOWELL et al. v. TRIPLETT et al.

No. 3816.

Circuit Court of Appeals, Fourth Circuit.

June 3, 1935.

Before PARKER and SOPER, Circuit Judges, and McCLINTIC, District Judge.

Clifton V. Edwards, of New York City (Gaylord Lee Clark, of Baltimore, Md., and John B. Brady, of Washington, D. C., on the brief), for appellants and cross-appellees.

Samuel E. Darby, Jr., of New York City (Cook & Markell, of Baltimore, Md., on the brief), for appellees and cross-appellants.

Before PARKER and SOPER, Circuit Judges, and McCLINTIC, District Judge.

SOPER, Circuit Judge.

The three United States patents involved in this suit, namely, Lowell and Dunmore, No. 1,455,141, Dunmore, No. 1,635,117, and Dunmore and Lowell, No. 1,606,212, were involved in three earlier suits in the District Court of Delaware, Dubilier Condenser Corporation et al. v. Radio Corporation of America, 34 F.(2d) 450, wherein it was held that the first two patents were valid and infringed, and that the third patent was not infringed. Plaintiffs did not appeal from the adverse decision upon the third patent, but the Radio Corporation of America prosecuted appeals from the favorable decisions on the other patents; and the Circuit Court of Appeals for the Third Circuit reversed the decree of the District Court as to these patents, and held the claims involved, to wit, claims 3 and 14 of patent No. 1,455,141, and claim 9 of patent No. 1,635,117, to be invalid as covering mere aggregations devoid of invention and unpatentable in view of the prior art. Radio Corp. v. Dubilier Condenser Corp., 59 F. (2d) 305, 309. On October 25, 1932, certiorari was denied by the Supreme Court as to patent No. 1,455,141, because it was not applied for in time, and as to patent No. 1,635,117 without statement of reason. 287 U. S. 648, 53 S. Ct. 96, 77 L. Ed. 560; 287 U. S. 650, 53 S. Ct. 96, 77 L. Ed. 562.

The claims in suit in the pending case are claims 1 to 4 and claims 13 and 14 in patent No. 1,455,141; claims 9, 11, and 12 of patent No. 1,635,117; and claims 1 to 9 in patent No. 1,606,212.

The nature of the devices is fully described in the opinion of Judge Morris in the District Court of Delaware. Dubilier Condenser Corporation v. Radio Corporation of America, supra. For our present purposes, it is sufficient to say that all of the patents in suit relate to the use in radio receiving sets of alternating current from an ordinary household lighting circuit, in lieu of direct current from A and B batteries and storage cells. The standard 110-volt alternating current, used for lighting purposes, has a frequency of 60 cycles per second, and these continual reversals or alternations produce a distortion of modulation, and a strong hum in the sound output of a radio receiving set, that make the reception unsatisfactory. The elimination of these disadvantages was the problem which the patentees sought to solve.

In patent No. 1,455,141, eliminating means are disclosed for the radio frequency amplifier portion, the detector portion, and the audio frequency amplifier portion, into which the receiver is divided. Patent No. 1,635,117 relates to the operation of the audio frequency amplifier by alternating current. The immediate application of the patent is in connection with a device for the radio operation of telegraph instruments, but the patent points out the use of the amplifier in radio receivers. Patent No. 1,606,212 relates to the use of an audio frequency amplifier and loud speaker operated by alternating current. A coil armature and an electro magnetic field coil are used, and the patent teaches that the hum can be eliminated by the relation in which the windings of these coils are connected.

On July 8, 1933, more than eight months after the denial of the petitions for writs of certiorari by the Supreme Court, the plaintiff filed in the Patent Office a disclaimer with respect to certain claims of patent No. 1,455,141 including claims 3 and 14, which had been held invalid in the Third Circuit, and also a disclaimer with respect to certain claims of patent No. 1,635,117, including claim 9, which had also been held invalid. None of the invalidated claims were canceled by the disclaimers. The purpose of the disclaimers was to ensure that the broad language of the claims would be given more definite meaning by reference to the disclosures of the patent so as to cover what is there described, or the equivalent thereof, in accordance with the well-established rule that in interpreting the language of a claim, the words are not to be taken literally but in the sense in which they were used by the inventor as disclosed in his specification. Elevator Supplies Co. v. Graham & Norton Co. (C. C. A.) 44 F.(2d) 354; Westinghouse v. Boyden Power-Brake Co., 170 U. S. 537, 568, 569, 18 S. Ct. 707, 42 L. Ed. 1136.

The bill of complaint in the present suit was filed on August 17, 1933, against alleged infringers, who were not parties to the suit in the Third Circuit, in order to obtain another hearing upon the merits of these claims, and to secure a decree upholding their validity. When the case was called for trial, defendants moved to dismiss the bill as to the first two patents in suit on the ground that the disclaimers had not been filed within a reasonable period after the final adjudication in the Third Circuit, as required by the provisions of the federal statutes, Rev. St. §§ 4917 and 4922, 35 US CA §§ 65, 71. The gist of these sections and the interpretation to be placed upon them is thus set out in Ensten v. Simon, Ascher & Co., 282 U. S. 445, 450, 452, 453, 51 S. Ct. 207, 208, 75 L. Ed. 453:

"The first of these sections provides in substance that whenever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or discoverer, he may be permitted to make disclaimer of such parts of the thing patented as he shall not choose to claim or hold by virtue of his patent. The other permits the patentee to maintain a suit on his patent, although through inadvertence, accident, or mistake, and without any wilful default or intention to mislead the public, he has claimed some material or substantial part as an invention of which he was not the original or first inventor. He is deprived, however, of the right to recover costs, unless he has filed proper disclaimer before commencement of his suit. And it further provides: `But no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer.' * * *

"Under the early accepted general rule a patent with an invalid claim was wholly void, and this defect effectually barred suit upon it. Congress undertook to modify this. * * * The two sections `are parts of one law, having one general purpose, and that purpose is to obviate the inconvenience and hardship of the common law, which made a patent wholly void if any part of the invention was wrongfully claimed by the patentee, and which made such a defect in a patent an effectual bar to a suit brought upon it.' * * * Construed together they `enact that where a patentee claims materially more than that which he was the first to invent, his patent is void, unless he has preserved the right to disclaim the surplus; and that he may fail to preserve that right, by unreasonable neglect or delay to enter a disclaimer in the Patent Office.' * * *

"The statute is remedial; the intent is to aid the inventor free from wilful default or intention to mislead the public by permitting him to avoid the consequence of inadvertence, accident or mistake through prompt disavowal of the apparent right to exclude others from something improperly included in the words of his grant. Escape is permitted only to one who acted originally in good faith and who has complied with the prescribed conditions.

"`The same principle which forbids a patentee to assert a right to more than he has actually invented compels him to disavow the right as soon as he discovers that it has been unjustly claimed. Unreasonable delay in disclaiming is thus tantamount to an original fraudulent claim, and through it the patentee loses the privilege of making the amendment by which alone his patent could be saved. The question of unreasonable delay is a question for the court, upon the facts as found either by its own investigation or the verdict of a jury. Delay begins whenever the patentee becomes aware that he has claimed more than he has invented or described.'"

The motion to dismiss was denied by the district judge, since, in his opinion, the delay was not unreasonable in view of the mass of prior litigation affecting the patents and the complexity of the subject-matter. This ruling is challenged in view of decisions more fully discussed in an opinion of this court filed May 1, 1935, in The General Chemical Company v. Standard Wholesale Phosphate & Acid Works, 77 F.(2d) 230, which indicate that disclaimers should be promptly filed. However this may be, the ruling was not prejudicial to the defendants because of the final disposition of the case. Subsequently, the defendants amended their answer raising the defense that the two patents are invalid, not only on account of the unreasonable delay in filing the disclaimers, but also because the disclaimers were inadequate. On the latter ground, the defendant again moved the court to dismiss the bill as to these two patents. During the discussion that followed, the plaintiff made an offer of proof in written form, under Equity Rule No. 46 (28 USCA following section 723) in regard to these patents, and this was filed; but the district judge, being of the opinion that the disclaimers were inadequate, granted the motion to dismiss. He rested his conclusion primarily on the ground that when a court of the United States is prima facie satisfied that a matter has been thoroughly litigated in another...