Miller v. Pierce, Patent Appeal No. 3936.

• Court: U.S. Court of Customs and Patent Appeals (CCPA)
• Writing for the Court: GARRETT, Presiding , and BLAND, HATFIELD, LENROOT, and JACKSON, Associate
• Citation: Miller v. Pierce, 97 F.2d 141, 25 C.C.P.A. 1195 (Cust. Ct. 1938)
• Decision Date: 06 June 1938
• Docket Number: Patent Appeal No. 3936.
• Parties: MILLER v. PIERCE.

97 F.2d 141 (1938)

MILLER v. PIERCE.

Patent Appeal No. 3936.

Court of Customs and Patent Appeals.

June 6, 1938.

Clifton V. Edwards, of New York City, and John B. Brady, of Washington, D. C., for appellant.

Merrell E. Clark, of New York City, David Rines, of Boston, Mass., and Jefferson Ehrlich, of New York City, for appellee.

Before GARRETT, Presiding Judge, and BLAND, HATFIELD, LENROOT, and JACKSON, Associate Judges.

BLAND, Associate Judge.

On April 18, 1930, George W. Pierce, Rumford Professor of Physics and Director of the Cruft Laboratory at Harvard University, filed an application, serial No. 695,094, being a renewal of his application filed February 25, 1924, in the United States Patent Office for a patent for "Electrical Systems." On April 22, 1930, a patent, No. 1,756,000, issued to John M. Miller, a radio engineer connected with the Naval Research Laboratory at Bellevue, D. C., upon an application filed September 10, 1925, for "Piezo-electric oscillation generator."

On September 21, 1932, an interference was declared between the application of Pierce and the patent of Miller, consisting of nine counts, being claims of the Miller patent. On January 16, 1933, Miller moved to dissolve the interference on the ground that Pierce did not have the right to make the counts of the issue, and on the same date Pierce moved to amend the interference by adding nine counts, being claims of the Miller patent. The motion to dismiss of Miller and the motion to amend of Pierce were denied by the Examiner of Interferences. The party Pierce appealed to the Board of Appeals from the said decision of the Examiner of Interferences refusing to add the proposed counts, and the board reversed his decision as to six of the counts which were, on March 13, 1934, added to the interference.

The patent to Miller was inadvertently issued by the Patent Office, the application therefor being copending with the application of Pierce. Pierce, being entitled to the filing date of his application of February 25, 1924, which was before the filing date of Miller, is the senior party, and Miller, the junior party, has the burden of proving his case by a preponderance of the evidence.

The invention involved in this interference relates to an electric oscillation generator comprising a piezo-electric crystal to control the frequency of oscillations generated with the aid of a vacuum tube. Prior to the entry of either Miller or Pierce into the field, the oscillating audion, i. e., the three-electrode vacuum tube comprising a grid, a filament (cathode), and a plate, had been used extensively as a generator of electrical oscillations in radio transmitting stations, by feeding back energy from the plate circuit to the grid circuit thus causing the tube to oscillate. The feeding back being accomplished by coupling the plate circuit to the grid circuit, inductively by means of a transformer, or through the capacity which exists between the grid and the plate, the frequency of the electrical oscillations generated was determined by the electrical characteristics of the associated circuits such as the inductance of a coil or the capacity of a condenser. The possibility of variations in the generated frequencies, due to variations in the value of the inductance or capacity, became objectionable due to resulting interference between the various transmitters in use.

It was found that a plate cut from a natural quartz crystal, due to the piezoelectric properties thereof, can be made to vibrate by the application of alternating electric voltages, the frequency of oscillation being substantially independent of the inductance or capacity present in the circuits. The counts of this interference do not cover broadly the piezo-electric oscillator per se but define certain specific improvements therein.

The Examiner of Interferences divided the counts of the interference into four groups as follows:

"(I) Counts 1, 2, 4 to 7 and 9, which define a piezo-electric crystal in circuit with a vacuum tube in the output circuit of which there is provided a tunable resonant circuit.

"(II) Count 10, which differs from the counts of group I in the recital of a grid-filament leakage path and a choke coil included therein.

"(III) Counts 3, 8, 11, 13, 14 and 15, which define a piezo-electric crystal in the grid-filament circuit of the vacuum tube, the output circuit of the latter including the tunable resonant circuit.

"(IV) Count 12, which differs from the counts of group III in the recital of the grid-filament leakage path and the choke coil therein."

Priority of invention as to all the counts was awarded, by the Examiner of Interferences, to Pierce, which decision was affirmed by the Board of Appeals. From the decision of the board Miller appealed to this court. At the oral argument, Miller moved to dismiss the appeal as to counts 10 and 12, which motion is allowed. There remain to be considered only the counts comprised in groups I and III, viz., counts 1, 2, 4 to 7, and 9, and counts 3, 8, 11, 13, 14 and 15, respectively. Count 1 is illustrative of the counts comprising group I, and count 3 is illustrative of the counts comprising group III. They follow:

"1. In an oscillation generator, a vacuum tube, a quartz crystal in circuit with said tube, and a tunable resonant circuit connected in the output circuit of the tube." (Italics ours.)

"3. In an oscillation generator, a vacuum tube, having an input circuit comprising a quartz crystal connected between a control electrode and cathode of said vacuum tube and a tunable resonant circuit external to said input circuit of said tube and associated with a circuit between the cathode and an electrode of said tube which electrode is maintained at an average potential different from that of said cathode." (Italics ours.)

Prior to the institution of this interference in the Patent Office, suits were brought by Miller in the United States District Court for the District of Delaware, against certain licensees of the party Pierce for infringement of the claims (among others) of his patent which correspond to the counts on appeal here. One of the defenses raised was the alleged prior invention by Pierce. The court held (Miller v. National Broadcasting Co., 6 F.Supp. 47) that the Miller patent was...