Minneapolis-Honeywell Regulator Co. v. Midwestern Inst., Inc., 57 C 1267.

• Decision Date: 21 October 1960
• Docket Number: No. 57 C 1267.,57 C 1267.
• Citation: 188 F. Supp. 248
• Parties: MINNEAPOLIS-HONEYWELL REGULATOR COMPANY, Plaintiff, v. MIDWESTERN INSTRUMENTS, INC., Defendant.
• Court: U.S. District Court — Northern District of Illinois

188 F. Supp. 248

MINNEAPOLIS-HONEYWELL REGULATOR COMPANY, Plaintiff, v. MIDWESTERN INSTRUMENTS, INC., Defendant.

No. 57 C 1267.

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

June 30, 1960.

On Motion for Amendment of Findings October 21, 1960.

Will Freeman, Bair, Freeman & Molinare, Chicago, Ill., for plaintiff.

Ooms, Welsh & Bradway, Chicago, Ill., Gordon D. Schmidt, Hovey, Schmidt, Johnson & Hovey, Kansas City, Mo., for defendants.

ROBSON, District Judge.

This suit involves the validity and infringement of Claims 3 and 13 through 17, inclusive, of the C. A. Heiland Patent No. 2,580,427 for a "Recording System," issued January 1, 1952, on an application filed August 11, 1944.

The essence of the invention is an oscillograph which produces an immediately visible trace or chart of the electrical phenomena being observed. It is used in many scientific, military and medical fields. The unique aspect of the invention is the realization that utilization of radiation, principally in the invisible portion of the spectrum, when matched with a paper coated with an emulsion primarily responsive to such radiations, permits recording of multiple high, as well as low, frequency phenomena; this recording becomes immediately visible in ordinary room light, without the delay of wet-process development.

Plaintiff's instrument is known as a "Visicorder" and defendant's as a "Direct/Riter." Defendant's Models 602 and 616 are charged with infringing claims 16 and 17 of the patent, and its Model 616, when fitted with a filter, is charged also with infringing Claims 3, 13, 14 and 15.

It is clear that the inventor combined elements existing in the prior art in an oscillograph, a lamp emitting principally ultraviolet rays or invisible rays, a paper primarily responsive to such rays and having the property of being immediately readable, when subjected to such rays.

There is no question that the prior art divulged oscillographs having direct read-out properties when using a mechanical pen or stylus. There were also the so-called "wet-process" oscillographs which permitted simultaneous charting of multiple high-speed phenomena. The prior art also revealed paper primarily responsive to ultraviolet rays.

The mechanical pen type oscillographs had the disadvantage of not being able to record very fast phenomena because of the inertia of the pen. Furthermore, they recorded but a limited number of phenomena simultaneously because one moving pen might obstruct the other. While the wet-process oscillograph obviated the disadvantages of inability to cope with fast-moving phenomena and the limited number of phenomena contemporaneously recordable, it had its own insurmountable disadvantage of delaying the examination of the record until after the photographic development.

A very narrow legal question is presented. It is whether the inventor, Heiland, wrought "unusual or surprising consequences from the unification of the elements" and "added to the sum of useful knowledge" achieving "the impalpable something which distinguishes invention from simple mechanical skill." Crane Packing Company v. Spitfire Tool & Machine Co., Inc., 7 Cir., 1960, 276 F.2d 271, 273.¹

If fortification were needed to buttress the conclusions of patentable novelty and usefulness and nonrevelation of the combination in the prior art, it might be found in defendant's not producing and marketing the highly desired and needed machine until after it had viewed the plaintiff's machine.²

The legal principles are not difficult³ nor disputed. It is in their application that the parties differ.

A great deal of reliance is placed by defendant on the collective revelations of the prior art to defeat the inventive stature of this patent. The Court, however, is convinced that no worker in the oscillator field with mere mechanical skill had been able to collate the scattered revelations into an effective and highly useful instrument as did the patentee. He perceived that paper having prescribed chemical properties responded primarily and immediately to specific rays, the ultraviolet and invisible rays, chemically changing the emulsion on the paper so as to make immediately a visible line on the paper.

Oswald Patent No. 2,030,760, dated February 11, 1936, cited by defendant's expert as the best reference against the validity of the Heiland patent, was on a "Method and Means For the Recordation of Sound" in "talking movies" upon "photo-sensitive material to light of approximately 4,000 Angstrom units" by photo-electrical means. His Claim 7 even limits the light to ultraviolet rays. He also counseled using "that particular form of light * * * best suited to the particular emulsion deemed most suitable," and that "the relative excellence of the result will depend upon the selection of the wave length particularly appropriate to the photographic emulsion selected." The Oswald patent is not a file wrapper reference.

The important differentiation in the Oswald patent is that it contemplated "developing said latent images into * * visible images." Oswald's specifications state that an object of his invention is the "treatment of that latent image and phsyical means, chosen with due regard to the means and methods which had been employed to implant the latent image and the characteristics of the particular photo-sensitive material employed, as will retain in the stable and completed sound image the quality imparted by such previous steps in the process." The need for wet-processing in Oswald is confirmed in the specifications which advise the selection of "the developer for the latent image so implanted upon the selected emulsion * * * with due regard to the particular characteristics of the particular emulsion. * * *."

Oswald's specifications proceed to delineate the development solution, the time and temperature to be employed in development, and then "the usual steps of washing, fixing, and final washing." He further advises that the film be "totally immersed during the entire period of development in order to minimize oxidation fog."

It is thus very evident that Oswald had not achieved an immediately visible trace by the use of ultraviolet rays and the prescribed emulsion. His teachings received patent recognition in February, 1936, and yet they taught no one to make the machine having the capabilities of the Visicorder or Direct/Riter, which did not appear on the market until twenty years later.

It was also shown that Oswald was principally concerned with the recordation of sound and made use of black and white film which has its greatest sensitivity in the visible spectrum.

The Mintrop Patent No. 1,451,080, issued April 10, 1923, is cited by defendant as prior art in respect to the filter element of the Heiland patent, which element is found only in plaintiff's Claims 3, 13, 14 and 15, and therefore raisable only as to them. The Mintrop patent concerns a "Field Seismograph" and teaches a "yellow or red window" which "allows inspecting the curve and the time marks from the outside." It utilized, however, an incandescent lamp, did not disclose matching of rays and paper, and required wet developing. It is therefore not anticipatory of even Claims 3, 13, 14 and 15.

The deBoer Patent No. 2,057,016, issued October 13, 1936, covers a "Light-Sensitive Material and Process" and is cited by defendant as a disclosure of Heiland's teachings. However, a careful reading of that patent shows that although an image is formed by subjection of paper chemically responsive to particular rays, the radiation must be for a "sufficient length of time" to produce a readily perceptible contrast effect. If "it is subjected for a shorter length of time a latent picture is produced which can readily be developed." The "embodiments" of the deBoer patent and its claims cite the development of the image to achieve the desired "visible contrast effect," although claiming a visible trace and immunity of the paper from daylight rays. The testimony disclosed that one embodiment of the deBoer patent which did not require development required a vacuum, which rendered it impractical. Paper made in accordance with the deBoer patent, and tested in the machines here involved, was ineffective.

Sheppard Patent No. 1,934,451, issued November 7, 1933, for an ultraviolet "sensitive layer" on paper to demonstrate or dose ultraviolet radiation of sunlight or artificial light, revealed only that paper of certain chemical composition reacted to give a visible image when subjected to ultraviolet rays. Paper made in accordance with this patent was tested in plaintiff's oscillator and proved, according to the testimony, to have such a slow speed of response as to be ineffective in plaintiff's oscillator. Similar samples proved ineffectual in defendant's Model 602.

The Lockhart Patent No. 2,099,938, issued November 23, 1937, for an Electrostethograph, for recording heart beats, specifically provides for wet-processing. It says: "The handle must then be swung for cutting off the film and closing the cylinder so that the cylinder can be removed from the compartment and taken to the dark room for development." There is no intimation in Lockhart of matching of rays to sensitive responsiveness of paper.

It is not necessary to discuss the remaining patents cited by defendant, some of which were rejected as not anticipatory by the Patent Office. They were relegated by defendant's expert to less important positions than those patents already detailed.

No single prior art patent covered the Heiland novel combination. In fact, most of those dealing with the respective elements revealed less helpfully the constituent parts.

Much reliance is also placed by the defendant upon the work carried on for the United States Government by the Department of Terrestrial Magnetism (abbreviated DTM) of the Carnegie Institution, in connection with work on a Magnetograph, in 1943. This work was classified as restricted for security...