Pierce v. Aeronautical Communications Equipment, Inc.

• Decision Date: 06 September 1962
• Docket Number: No. 19422.,19422.
• Citation: Pierce v. Aeronautical Communications Equipment, Inc., 307 F.2d 790, 134 USPQ 533 (5th Cir. 1962)
• Parties: Helen Russell PIERCE, Executrix of the Last Will and Testament of George Washington Pierce, Deceased, Appellant, v. AERONAUTICAL COMMUNICATIONS EQUIPMENT, INC., Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

307 F.2d 790 (1962)

Helen Russell PIERCE, Executrix of the Last Will and Testament of George Washington Pierce, Deceased, Appellant, v. AERONAUTICAL COMMUNICATIONS EQUIPMENT, INC., Appellee.

No. 19422.

United States Court of Appeals Fifth Circuit.

September 6, 1962.

David Rines, Robert H. Rines, Boston Mass., Walter Humkey, Harold L. Ward, Miami, Fla., for appellant.

Walter H. Free, New York City, for appellee.

Before TUTTLE, Chief Judge, BELL, Circuit Judge, and CARSWELL, District Judge.

TUTTLE, Chief Judge.

We undertake here to present what we consider to be the fairly narrow issue that remains to be decided in this extended and hard-fought litigation. We do this by assuming the correctness of all of the contentions of the appellee except the ultimate conclusion of law which remains for our decision. The issue can be posed as a question: If an inventor obtains a combination patent in the area of radio communication, which combination consists of a transmitting and receiving system, each of which, that is, both the transmitting part and the receiving part, includes an element known as an "oscillator," and the same inventor obtains a separate patent, applied for at the same time but issued some seven years later, on the oscillator itself, is the patent on the oscillator void for double patenting if it be assumed that its inclusion in each the transmitting and receiving parts of the combination patent was the essential element without which the combination patent would not have issued? In posing the question it must be made clear that in the combination patent no separate claim was made as such for the oscillator, each of the three claims of the patents being in terms "a transmitting and receiving system having, in combination, means for transmitting signal waves, means for receiving the signal waves, etc."

This Court has previously given consideration to the contentions now advanced by the parties when the case was here on an appeal from the grant by the trial court of a motion for summary judgment for the defendant, which was entered by it upon the "reasoning" of the Court of Appeals for the First Circuit in two earlier cases involving the same patents, Pierce v. Aeronautical Communications Equipment Co., 5 Cir., 255 F.2d 458. We there held that, notwithstanding the decision of a court of a different circuit for which we have the highest respect, the inventor was entitled to have the validity of his patent passed on in a case against a different alleged infringer as to all factual matters as well as on the legal issues involved by the courts of this circuit. We made reference to that earlier decision for a description of the patent now in suit, and a statement demonstrating its importance, or, at least, the importance of it, or the prior combination patent, in the art of radio communication. However, the following brief statement of facts is essential to an understanding of the question we have posed:

Professor Pierce, the appellant's decedent, was the unquestioned inventor of the Pierce oscillator which is claimed as the invention in the patent No. 2,133,642 here in issue. At the time of inventing the Pierce oscillator, Pierce invented a number of subsidiary electrical systems for which, by application of February 25, 1924, he endeavored to obtain a single patent covering them all. Since this application included not only general claims for the use of a piezoelectric crystal to control the frequency of an oscillating system (the oscillator) but also specific claims for the combination of a radio transmitter and receiver in which two of such crystals could be used, the Patent Office held¹ that more than one invention was described in the application and required a division. In compliance with this direction Pierce filed a number of additional applications and two of the resulting patents are involved in this suit. One of the additional applications matured, however, on January 20, 1931, into patent No. 1,789,496, and this patent expired in 1948, before the defendant began the infringement acts complained of in this suit.

Patent No. 1,789,496, consisting of three claims, is for a radio transmitting and receiving system in combination, having a means of keeping the oscillations of both the transmitter and receiver at the same constant frequency. Claim 1 specifically mentions the use of a piezoelectric body for controlling the frequency of these oscillations and that would seem to allow the piezoelectric-crystal-controlled oscillators shown in the Cady patent No. 1,472,583 to be used as an element in the combined transmitting and receiving system. Claim 2 specifies the use of an electro-mechanical vibrator having two electric terminals in a single vacuum tube circuit, which circuit oscillates at a frequency widely independent of the other elements in the circuit. It thus apparently specifies the Pierce oscillator. Claim 3 is much broader in that it calls for any kind of prior art electro-mechanical vibrator to control the frequency.

Action on Pierce's other applications, which resulted from the division, was delayed because of requests for a fuller explanation of the properties of piezoelectric crystals and the failure to pay on time the required final fee. On April 20, 1930, the Patent Office issued a patent to John M. Miller covering claims 51, 52, 54, 55, 56 and 61 through 68 of Pierce's now patent No. 2,133,642. Litigation resulted in the holding that Pierce and not Miller was the inventor of the Pierce oscillator represented by the above claims. Miller v. National Broadcasting Company, Inc., 3 Cir., 79 F.2d 657; Miller v. Pierce, 97 F.2d 141, 25 C.C.P.A. 1195. Thereafter, on October 18, 1938, the Pierce patents No. 2,133,642 and No. 2,133,646 and the other patent still involved in this suit, were issued.

After the expiration in 1948 of the protection provided by patent No. 1,789,496 various business concerns began to produce electrical vibrator systems, which Pierce believed infringed his later patents, which had not, by that time, expired. He entered nine suits in several different circuits against various defendants. The principal contention as to infringement here relates to the thirteen claims, 51, 52, 54, 55 and 61 through 68 of No. 2,133,642. This is the patent covering the Pierce oscillator.

The parties do not contest the basic right of a patentee, in such circumstances, to have his claims passed on by the courts of the other circuits. In Triplett v. Lowell, 297 U.S. 638, at page 645, 56 S.Ct. 645, at page 649, 80 L.Ed. 949, the Supreme Court said:

"The court whose jurisdiction is invoked by such a suit i. e., a second suit in a circuit other than the circuit which has already passed on the matter must determine for itself validity and ownership of the claims asserted, notwithstanding a prior adjudication of invalidity of some of them, unless those issues have become res adjudicata, by reason of the fact that both suits are between the same parties or their privies." (Emphasis added)

When the case was here before, we reversed the summary judgment entered by the trial court, because it was apparent that the trial court merely adopted the decisions of the Court of Appeals for the First Circuit in American Communications Co. v. Pierce, 1 Cir., 208 F.2d 763, and Pierce v. Hewlett Packard Co., 1 Cir., 220 F.2d 531, without making its own decision, to which the patentee was entitled. In reversing the case, we stated that the language of the Court of Appeals for the First Circuit in the Hewlett Packard case "suggests that patent No. 1,789,496 was not valid at all in that it was issued for a combination radio transmitting and receiving system with claims both using and not using Pierce oscillators." We then stated that if the '496 patent was not valid, then the defense of double patenting as to the '642 patent would be unavailing. However, the patentee's executrix, the appellant here, has now expressly waived any contention that the '496 patent was invalid. She, therefore, undertakes to meet the double patenting defense headon.

As to the double patenting defense as applied in the First Circuit, we had the following to say:

"Even if the First Circuit cases have analyzed the situation correctly, they do not proceed to the point of considering the position of a patentee who has a patent on a combination invention which includes in it a patentable element. The plaintiff in this case may be able to prove that the Pierce oscillator itself is not sufficiently described in claim 2 of patent No. 1,789,496 to provide Pierce with sufficient protection. If someone had used the Pierce oscillator in a system other than the radio system described in No. 1,789,496, the plaintiff would have had difficulties, perhaps insurmountable, in proving that he was afforded protection under No. 1,789,496. A patent on a combination is a patent on the functioning whole, not on the separate parts and the fact that an unpatented element of a combination may distinguish the invention does not draw to it the privileges of a patent. Mercoid Corporation v. Mid-Continent Investment Co., 320 U.S. 661, 64 S.Ct. 268, 88 L.Ed. 376; Mercoid Corporation v. Minneapolis-Honeywell Regulator Co., 320 U.S. 680, 64 S.Ct. 278, 88 L.Ed. 396; Rowell v. Lindsay, 113 U.S. 97, 5 S. Ct. 507, 28 L.Ed. 906. (Emphasis Added)

"The reasoning of the above First Circuit opinions is, moreover, opposed to the basis of the division order and places the inventor in a perplexing dilemma. He must divide his claims into separate applications for separate patents to comply with the Patent Office\'s requirements, but when he does this he faces the prospect of losing part of his protection, if, as in this case, the patents are issued at different times, and the double patenting argument is used against him. If, as appears to be undisputed, the plaintiff

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