Pierce v. Allen B. Du Mont Laboratories, Inc.

• Decision Date: 15 September 1959
• Docket Number: Civ. A. No. 1624.
• Citation: 178 F. Supp. 84
• Parties: Helen Russell PIERCE, Executrix of the Estate of George Washington Pierce, Deceased, Plaintiff, v. ALLEN B. DU MONT LABORATORIES, INC., Defendant.
• Court: U.S. District Court — District of Delaware

178 F. Supp. 84

Helen Russell PIERCE, Executrix of the Estate of George Washington Pierce, Deceased, Plaintiff, v. ALLEN B. DU MONT LABORATORIES, INC., Defendant.

Civ. A. No. 1624.

United States District Court D. Delaware.

September 15, 1959.

Thomas Cooch (of Connolly, Cooch & Bove), Wilmington, Del., for plaintiff, David Rines and Robert H. Rines (of Rines & Rines), Boston, Mass., of counsel.

Richard F. Corroon (of Berl, Potter & Anderson), Wilmington, Del., for defendant, Floyd H. Crews and Donald J. Overocker (of Darby & Darby), New York City, of counsel.

LAYTON, District Judge.

This is an action for infringement of five patents issued to Dr. George Washington Pierce, now deceased, his wife having since been substituted as a party. The patents are No. 2,133,642, No. 2,133,643, No. 2,133,646, No. 2,133,648 and No. 2,266,070. Patent No. 2,133,642, ('642), is the basic patent of the group and may be referred to as the basic Pierce-oscillator patent. Claims numbered 3, 24, 40, 51, 52, 54, 55, 56 and 61 to 68, inclusive, are charged to have been infringed. Also, claims 105 and 106 of the same patent, not concerned with the Pierce oscillator, are charged to have been infringed.

The defenses are (1) invalidity, (2) functionality, (3) vagueness and indefiniteness of the claims and (4) violation of the anti-trust acts.

Prior to trial the defendant filed a motion for summary judgment which was denied. The reasons therefor, as well as some history of the background of the patents in suit and of all prior litigation concerning them, is set forth in the opinion of this Court denying that motion.¹ D.C.Del.1958, 166 F.Supp. 332. As will appear therein, most of the claims of all the patents in suit have been litigated in the Federal District and Circuit Courts in Massachusetts and ruled invalid. Reference may be had to the opinions of these Courts as follows:² Pierce v. American Communications Co., Inc., D.C.Mass.1953, 111 F.Supp. 181, reversed American Communications Co., Inc., v. Pierce, 1 Cir., 1953, 208 F.2d 763; Pierce v. Hewlett-Packard Company, D.C.Mass.1954, 125 F.Supp. 329, affirmed 1 Cir., 1955, 220 F.2d 531; Pierce v. American Communications Company, D.C.Mass.1958, 159 F.Supp. 943; Pierce v. American Communications Company, D.C.Mass.1958, 169 F.Supp. 351.

Double Patenting.

The defense of invalidity is based mainly upon two grounds, first, double patenting over Pierce's earlier, expired patent No. 1,789,496 and, second, on the basis of the prior art. The defense of double patenting will be first examined because, in my judgment, it represents the principal defense. It is claimed that patent '642 represents double patenting over patent '496. A brief statement as to the history of these patents is, thus, appropriate here.

Originally, the application for the Pierce patent (Serial No. 695,094) was filed in 1924. It included general claims for the use of a piezo-electric crystal to control the frequency of an oscillating system. In addition, there were claims for the combination of a radio transmitter and receiver in which piezo-electric crystals might be used. The Patent Office conceived that more than one invention was embodied in the application and allegedly requested³ a division. Pierce complied and in 1928 filed several applications for division. On one of these applications (Serial No. 247,469), patent No. 1,789,496 was issued in 1931. Serial No. 247,469 was specifically referred to as a division of co-pending application Serial No. 695,094. Returning now to the original application, it was allowed, but for unexplained reasons was forfeited for failure to pay the final fee. It was renewed in 1930 but in 1932 an interference was declared between Pierce and one Miller. A favorable decision to Pierce was not received until June, 1938, and in October, 1938, Pierce patent No. 2,133,642 was finally issued. It resulted, then, that the combination patent '496 was issued years earlier than the basic patent '642.

The system disclosed in '496 comprises a device for transmitting and a device for receiving radio waves. Oscillators are elements of both of these components, an autodyne or self-heterodyne circuit (with a single vacuum tube) forming part of the receiving component. This self-heterodyne circuit "detects" or "demodulates" the low-frequency "intelligence" — music or voice — from the high-frequency radio carrier waves upon which it has been superposed at the transmitting end of the system. The circuit generates local oscillations of a slightly different frequency from those of the transmitter which interact or heterodyne with the latter to produce "beats" of a frequency equal to the difference between them. According to well-known principles, these "beats" permit the transmitted music or voice to be received audibly. This self-heterodyne circuit thus performs both the function of generating local oscillations and detecting the transmitted intelligence.⁴

A self-heterodyne circuit with oscillators other than the one developed by Professor Pierce had been previously successful only at low frequencies because in high frequency transmission and reception the variance in the frequencies at both ends of the system caused the frequency of the "beats" to vary so greatly that the signal could not be steadily received. With Pierce oscillators in the components, the beats were stabilized within a narrow range, thus permitting the constant and steady demodulation of the transmitted music or voice. Thus, with Pierce oscillators in the circuits, radio communication at high frequencies was entirely feasible for the first time.

The combination patent '496 contains three claims. These, as well as a comparison of the second of them with a representative claim of '642 (which claims the oscillator generically) appear in the Appendix. Only this second claim of '496 apparently specifies the Pierce oscillator as an element in both the transmitter and receiver.⁵ The combination as disclosed in claims 1 and 3 may be practiced with other vibrator-controlled, constant-frequency oscillators. As I analyze it, therefore, a generic device disclosed in one patent is a specfied element in one of three claims in a combination patent and an alternative element in the other two claims of that patent.

In the case of Miller v. Eagle Manufacturing Co., 1894, 151 U.S. 186, 198, 14 S.Ct. 310, 315, 38 L.Ed. 121, the Court expressed the broad criteria for determining whether two patents may be issued on related devices:

"* * * no patent can issue for an invention actually covered by a former patent * * * the second patent, although containing a broader claim, more generical in its character than the specific claims, contained in the prior patent, is also void; but that where the second patent covers matter described in the prior patent, essentially distinct and separable from the invention covered thereby and claims made thereunder, its validity may be sustained. (Emphasis added.)

"In the last class of cases it must distinctly appear that the invention covered by the later patent was a separate invention, distinctly different and independent from that covered by the first patent * * * it must be something substantially different from that comprehended in the first patent." (Emphasis added.)⁶

A basic principle of law relating particularly to patents on combinations-and-elements was enunciated in Palmer Pneumatic Tire Co. v. Lozier, 6 Cir., 1898, 90 F. 732, at page 744:

"One cannot extract an essential element of his invention from a former patent, without which the former patent would not have been granted, and make it the subject of a subsequent patent * * *."

"* * * if the second patent is for a distinct and separate invention, or to put the matter another way, has not been made integral with another invention already patented, so as to be fairly necessary to its use, it should be sustained. * * *" (Emphasis added.)

In that case an inventor was denied a patent on a certain fabric generically because of a prior patent on a tire constructed basically of that fabric, the court stating, at page 739:

"It is manifest * * * that the essential feature of the invention was the devising of the new fabric * * * and making it a constituent part of his `bicycle and other tubing.' Indeed, the tubing would not have been patentable at all without it, for it would have been nothing more * * * than had already been patented."

This fundamental principle was relied upon in the 1951 decision of the Court of Customs and Patent Appeals, Application of Coleman, 189 F.2d 976, 979, 28 CCPA 1156:

"If the claims are so related that the separately claimed element constitutes the essential distinguishing feature of the combination as claimed, different concepts are not involved, the inventions are not distinct, and double patenting will be found. Palmer Pneumatic Tire Co. v. Lozier supra; In re Hawkins, 57 F.2d 367, 19 C.C.P.A., Patents 1104." (Emphasis added.)

The Coleman case, 189 F.2d at page 979, recognized that:

"It is settled law that a party might be entitled to a patent for a combination because of the cooperation of the elements contained therein, and at the same time be entitled to a separate patent for one of the elements of the combination. In re Carlton, 77 F.2d 363, 22 C.C.P.A., Patents, 1223; In re Ferenci, 83 F. 2d 279, 23 C.C.P.A., Patents, 1023.

"In such a case, the question to be determined is whether two or more different inventive concepts are involved. In re Hadsel, 173 F.2d 1010, 36 C.C.P.A., Patents, 1075." (Emphasis added.)

The Coleman case involved two patents which bear much the same relationship as those issued to Pierce. One was for a method, or process, of protecting foodstuffs, consisting basically of two elements: (1) a chemical injected into the food, and (2) a wrapper. The other patent covered a particular wrapper, a "fungistatic wrapper", which might or might not be used as an element in the combination. The issue of double...