Nippon Elec. Glass Co., Ltd. v. Sheldon, 79 Civ. 2525 (RLC)

• Decision Date: 21 May 1982
• Docket Number: 80 Civ. 2654 (RLC) and 80 Civ. 5321 (RLC).,No. 79 Civ. 2525 (RLC),79 Civ. 2525 (RLC)
• Citation: 539 F. Supp. 542
• Parties: NIPPON ELECTRIC GLASS COMPANY, LTD., Plaintiff, v. Edward E. SHELDON, Defendant. ASAHI GLASS COMPANY, LTD., Plaintiff, v. Edward E. SHELDON, Defendant. Edward E. SHELDON, Plaintiff, v. SONY CORPORATION OF AMERICA, Defendant.
• Court: U.S. District Court — Southern District of New York

539 F. Supp. 542

NIPPON ELECTRIC GLASS COMPANY, LTD., Plaintiff, v. Edward E. SHELDON, Defendant.

ASAHI GLASS COMPANY, LTD., Plaintiff, v. Edward E. SHELDON, Defendant.

Edward E. SHELDON, Plaintiff, v. SONY CORPORATION OF AMERICA, Defendant.

Nos. 79 Civ. 2525 (RLC), 80 Civ. 2654 (RLC) and 80 Civ. 5321 (RLC).

United States District Court, S. D. New York.

May 21, 1982.

COPYRIGHT MATERIAL OMITTED

Hopgood, Calimafde, Kalil, Blaustein & Judlowe, New York City, for plaintiff Nippon Elec. Glass; John M. Calimafde, Frank Murphy, William Botjer, New York City, of counsel.

Paul, Weiss, Rifkind, Wharton & Garrison, New York City, and Oblon, Fisher, Spivak McClelland & Maier, P. C., Arlington, Va., for Asahi Glass Co.; Jay L. Himes, New York City, Arthur I. Neustadt, Richard D. Kelly, Arlington, Va., of counsel.

Spellman, Joel & Pelton, Robert J. Eichelburg, White Plains, N.Y., for Sheldon; Martin J. Spellman, White Plains, N.Y., of counsel.

OPINION

ROBERT L. CARTER, District Judge.

Three actions concerning the validity and infringement of patents pertaining to color television picture tubes were consolidated and tried before a jury on April 20-23, 1982. At the conclusion of the presentation of the evidence, the court, having concluded that without weighing the credibility of the witnesses or otherwise considering the weight of the evidence, a reasonable minded jury would be compelled to render a verdict for the corporate parties, see Simblest v. Maynard, 427 F.2d 1, 4 (2d Cir. 1970), took the case from the jury. The motions for directed verdict were granted because viewing the evidence in the light most favorable to Sheldon, "the evidence was so strongly and overwhelmingly in favor of his opponents that reasonable and fair minded men in the exercise of impartial judgment could not arrive at a verdict against them." Armstrong v. Commerce Tankers Corp., 423 F.2d 957, 959 (2d Cir.), cert. denied, 400 U.S. 833, 91 S.Ct. 67, 27 L.Ed.2d 65 (1970) (citations omitted); Noonan v. Midland Capital Corporation, 453 F.2d 459, 461 (2d Cir.), cert. denied, 406 U.S. 495 (1972); Mattivi v. South African Marine Corp., "Huguenot", 618 F.2d 163, 167 (2d Cir. 1980). Most recently in Daddi v. United Overseas Export Lines, Inc., "Oriental Inventor", 674 F.2d 175, at 177 (2d Cir. 1982), the above principle has again been reaffirmed as the controlling yardstick to be utilized in directed verdict determinations.

In dispute are two patents awarded to Dr. Edward Sheldon, United States Patents Nos. 3,543,073 ("'073 patent") and 3,610,994 ("'994 patent") for "Vacuum" and "Cathode-ray" "Tubes of Television Type for X-ray Protection." Dr. Sheldon elected claim 1 of the '073 patent as a representative claim of both patents.¹ Among its salient characteristics are a vacuum tube for color television comprising electronic parts to generate a beam of free electrons, a fluorescent screen that produces a multicolor television image, and a shielding mechanism to reduce X-ray emission through the face plate "to the amount smaller than 0.04 milliroentgen per hour mr/hr² measured at the distance of 5 cm. from said face plate, ... with said tube operating at 30 kv. potential and with said beam being of the standard amperage used in color television tubes ...."

The action commenced as a suit for declaration of patent invalidity brought by Nippon Electric Glass Company, Ltd. ("NEG") against Sheldon. A similar action was filed by Asahi Glass Company, Ltd. ("Asahi") soon afterward. NEG and Asahi manufacture glass envelopes that are used in the production of television sets, and they are the principal supplier of these envelopes for Sony Corporation of America ("Sony"), a large producer of color televisions. In response to the suits against him, Sheldon initiated a lawsuit for patent infringement against Sony.³ Before trial, Sony entered into a stipulation with Sheldon, the substance of which conceded that if the patents are valid, then Sony has marketed televisions infringing the patents.

Sheldon is a radiologist by training and profession. Sometime in late 1965 or early 1966 he had a "premonition" that color televisions emitted unsafe levels of X-radiation. He pursued this hunch with some testing and experimentation and eventually became convinced that the sets were unsafe. In particular, Sheldon's research convinced him that while the emissions from color televisions operating under normal conditions presented no danger to the viewer, when the set operated abnormally, that is, in excess of designated voltage limits, the potential harm from excess radiation was great. Sheldon's patents were a result of this "discovery."

Dr. Sheldon testified that he studied the literature for about a year without discovering any discussion of the problems. In the second half of 1966, he wrote a report, Danger of Eye Cataracts from X-rays Produced by Home TV Receivers. Simultaneously, he pursued through the United States Patent Office several patent applications that pertain to radiation safe color television tubes.⁴ In September or October, 1967, he testified before a Congressional Committee about the danger. At that time there was no federal legislation on the subject. The Underwriters Laboratories, the testing arm of the industry, recommended a maximum emission level of 2.5 mr/hr. The National Council of Radiation Protection recommended 0.5 mr/hr under normal operating conditions. Sheldon advocated a prescribed limit of 0.4 mr/hr under all conditions.

Sheldon's patents suggest that safe tubes could be produced without changing their basic components of an electron beam "gun" and a fluorescent screen contained within a glass tube, if the glass was made more resistant to radiation transmission by enhancing its radiation absorption characteristics. Sheldon candidly admitted, however, that he is not a glass technologist and that "the glass is not my invention." Transcript ("Tr.") 674. His contribution to the art, or so he claims, is teaching the need to provide greater protection. The gravamen of NEG's and Asahi's complaint is that this statement to the industry cannot satisfy the minimum threshold for patentable subject matter.

To qualify for a patent, a person must invent or discover some "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof ..." 35 U.S.C. § 101 (1976). No precise scope for patentability has been delineated; the issue is a recurrent source of Supreme Court litigation that has stressed the thinness of the line between the patentable and the unpatentable. See, e.g., Diamond v. Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 L.Ed.2d 155 (1981); Parker v. Flook, 437 U.S. 584, 589, 98 S.Ct. 2522, 2525, 57 L.Ed.2d 451 (1978). Clearly excluded from the realm of patentable subjects are "`phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts ..., as they are the basic tools of scientific and technological work.'" Parker v. Flook, supra, 437 U.S. at 589, 98 S.Ct. at 2525 (quoting Gottschalk v. Benson, 409 U.S. 63, 67, 93 S.Ct. 253, 255, 34 L.Ed.2d 273 (1972)). This proscription is tempered by the recognition that a practical application of laws of nature is protected by the patent monopoly. Sheldon's ability to satisfy the § 101 requirements for patentability thus turns, in part, on whether his "invention" is correctly described as mere observations of the inherent tolerance of the human body for X-radiation and of the radiation potential of commercial television sets or as a design for a television tube that combines those observations with a knowledge of picture tube construction to reveal how to manufacture a safe television.

Of course, satisfying the subject matter requirement of § 101 would not fulfill all of Sheldon's obligations under that section. Sheldon's apparatus, to qualify for a patent, must also be "novel." The novelty requirement, which finds greater specificity in 35 U.S.C. §§ 102, 103 (1976), precludes patenting devices substantially identical to existing articles whose elements perform substantially the same work in substantially the same manner. E.g., American Seating Co. v. National Seating Co., 457 F.Supp. 444, 452 (N.D.Ohio 1976), aff'd, 586 F.2d 611, (6th Cir. 1978), cert. denied, 441 U.S. 907, 99 S.Ct. 1999, 60 L.Ed.2d 377 (1979). In particular, courts will not permit an inventor to hold a protected monopoly on an apparatus that differs from prior incarnations solely due to substitution of a known substance for another performing essentially the same purpose. See, e.g., Griffith Rubber Mills v. Hoffar, 313 F.2d 1, 3-4 (9th Cir. 1963); E. H. Tate Co. v. Jiffy Enterprises, Inc., 196 F.Supp. 286, 298 (E.D.Pa.1961), aff'd, 306 F.2d 240, 243 (3rd Cir.), cert. denied, 371 U.S. 922, 87 S.Ct. 289, 9 L.Ed.2d 230 (1962).

The evidence presented at trial left no viable question whether Sheldon invented a "new and useful process, machine, manufacture or composition of matter, ...." Even granting Sheldon the presumption of validity that accompanies his patent,⁵ the court could find no credible evidence that Sheldon satisfied the subject matter and novelty requisites of § 101. Perhaps the most compelling evidence of the patents' shortcomings came from Sheldon's own testimony. On cross-examination he conceded that all the constituents of his claim other than the prescription of the limit of 0.04 mr/hr on transmitted X-radiation were well known prior to his patent. Tr. 187-208, 223. By his own account, thus, Sheldon attempted to patent a desired result or a numerical limit or standard. He claimed to have discovered a phenomenon of nature, that X-radiation in excess of 0.04 mr/hr from televisions is harmful to human health⁶ and applied for a patent to privatize the benefits that would flow from his teaching. Such a monopoly on ideas is unavailable under the patent laws.

Even if one were to construe the patent as one for a "safe color television tube,"...