Pierce v. Aeronautical Communications Equipment

• Decision Date: 12 May 1958
• Docket Number: No. 16830.,16830.
• Citation: Pierce v. Aeronautical Communications Equipment, 255 F.2d 458 (5th Cir. 1958)
• 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

255 F.2d 458 (1958)

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

No. 16830.

United States Court of Appeals Fifth Circuit.

May 12, 1958.

Walter Humkey, Miami, Fla., David Rines, Robert H. Rines, Rines & Rines, Boston, Mass., Fowler, White, Gillen, Yancey & Humkey, Miami, Fla., of counsel, for appellant.

Walter H. Free, New York City, Sydney L. Weintraub, Miami, Fla., Dana M. Raymond, Richard A. Lochner, Brumbaugh, Free, Graves & Donohue, New York City, of counsel, for appellee.

Before RIVES, TUTTLE and JONES, Circuit Judges.

TUTTLE, Circuit Judge.

This is an appeal from an order of the United States District Court for the Southern District of Florida granting defendant's motion for summary judgment.The defendant is charged with infringing five patents issued to the former, now deceased, plaintiff, George Washington Pierce.The five patents in the suit comprise Nos. 2,133,642, 2,133-643, 2,133,645, 2,133,646, and 2,133,648, all issued on October 18, 1938.¹It is alleged that the defendant a Florida corporation, is infringing plaintiff's exclusive rights under these patents by manufacturing, using and selling electrical and electromechanical vibrator systems and apparatus, including the Pierce oscillator.The summary judgment has the effect of ruling that all of the patents in issue are invalid.

The primary, but not the sole, importance of the patents involved is in the field of radio broadcasting where a need had existed for controlling the frequency of oscillating electrical circuits.Radio communication is transmitted by carrier waves which are generated from the transmitter by an alternating current of electricity flowing in and out of an antenna, composed of wires suspended in the air.Radio waves are produced when the current oscillates at a high frequency.Since communication between a sender and a receiver is possible only when both are tuned to the same frequency, it is highly desirable that the frequency of the waves sent out from a transmitter remain constant.

The problem of attaining constant frequency had existed prior to 1912 when deForest discovered that the thermionic vacuum tube or triode could be used to generate electric oscillations.This invention provided a feasible method, and since 1912 many experts in the field searched for improved means of controlling the frequency of electric systems.The principal fault with the deForest tube was that after the circuit had been in operation a while the elements in the circuit became heated and an undesirable amount of variation in the frequency resulted.

It was finally through the use of piezoelectric crystals that the solution came.These crystals were first noted in 1880 by Jacques and Pierre Curie.Because of their component substances, direct current when applied to them will cause the surfaces of the crystal to contract or expand.When mechanical forces are applied to contract or expand the crystal, electrical potentials of opposite sign are built up on the opposing surfaces of the crystal.Little had been accomplished in using the piezoelectric crystals in the radio field until Professor Walter G. Cady, of Wesleyan University began experimenting with the possibilities, and his work eventually attracted the attention of Pierce.

Professor Pierce discovered a means whereby the circuit could oscillate without employing any inductive coils or condensers and this could be accomplished at a remarkably constant frequency.In the Pierce oscillator, as it has come to be called in the field, a piezoelectric crystal is positioned in the input circuit, between the cathode and the grid or control electrode, or between the grid or control electrode and the anode.In the first named system the tunable resonant output circuit, consisting of the inductance coil and the condenser, is tuned to a higher frequency than the natural frequency of the crystal.Then when the system is in operation it will produce oscillations at a constant frequency determined by the natural frequency of the crystal.An important characteristic of the Pierce oscillator is that with the aid of a piezoelectric crystal having only two electrodes, it is not necessary to rely upon mechanical feed-back through a four-electrode crystal to obtain oscillations of very high frequencies such as are needed in radio transmission, and this is accomplished with the assurance that the oscillator will not oscillate except at that specific high frequency.

The Pierce oscillator is in wide use throughout the world through the licensing agreements granted by Professor Pierce, and it is acknowledged that Pierce has made a significant contribution to the field of electrical circuits and radio transmission.

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 but also specific claims for the combination of a radio transmitter and receiver in which such crystals could be used, the Patent Office held that more than one invention was described in the application and ordered a division.In compliance with this order Pierce filed a number of additional applications and several 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.

PatentNo. 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 order for a 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 to 68 inclusive 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., Patents, 1195.Thereafter, on October 18, 1938, the Pierce patent, No. 2,133,642, and the other four patents involved in this suit were issued.

After the expiration in 1948 of the protection provided by PatentNo. 1,789,496 various business concerns began to produce electrical vibrator systems, which Pierce believed infringed his six patents, which had not, by that time expired.He entered nine suits in several different circuits against various defendants.²

In the instant suit the plaintiff moved for a preliminary injunction to restrain the defendant from infringing the thirteen claims of patent No. 2,133,642 which were in issue in Pierce's litigation with Miller.That motion was denied and the denial was affirmed by this Court on the grounds that there was no showing of irreparable injury or abuse of discretion.223 F.2d 410.

Since the District Court in the issue now before us based its summary judgment upon the "reasoning" of two First Circuit Court of Appealscases instituted by the plaintiff against others than the present defendant, it becomes necessary at the outset to consider those opinions.In American Communications Co. v. Pierce, 1 Cir., 208 F.2d 763, both parties moved for summary judgment only on claims 51, 52, 54, 55, 56 and 61 to 68, inclusive, of the basic patent, No. 2,133,642.The district court111 F.Supp. 181, holding that the claims were valid and infringed, granted plaintiff's motion and denied defendant's motion.The Court of Appeals reversed, holding that generic patent No. 2,133,642 for an electrical system relating particularly to the use of a piezoelectric crystal for producing at a constant frequency the oscillation of such system, when read specifically on the combined transmitting and receiving systems discloses no invention distinct and separate from that of patent No. 1,789,496 and that it would not extend the plaintiff's monopoly under the mantle of patent No. 2,133,642.The Court reasoned that neither claim 1 nor claim 3 of patent No. 1,789,496 revealed any distinctive contribution to the art of frequency stabilization or radio systems; and when analyzing claim 2 with a typical claim of patent No. 2,133,642, claim 67, clause by clause, it concluded that the only significant difference indicated in the claims is the use to which the piezoelectric crystal may be put.Claim 2 of patent No. 1,789,496 narrows the operation of the crystal to the combined transmitting and receiving system whereas claim 67 of patent No. 2,133,642 more broadly states its use in any generating system.But as the radio system described by Pierce was held not to be novel in and of...