Pierce v. Allen B. Du Mont Laboratories, Inc., 13279.

• Decision Date: 29 November 1961
• Docket Number: No. 13279.,13279.
• Citation: 297 F.2d 323
• Parties: Helen Russell PIERCE, Executrix of the Last Will and Testament of George Washington Pierce, Deceased, Appellant, v. ALLEN B. DU MONT LABORATORIES, INC.
• Court: U.S. Court of Appeals — Third Circuit

297 F.2d 323 (1961)

Helen Russell PIERCE, Executrix of the Last Will and Testament of George Washington Pierce, Deceased, Appellant, v. ALLEN B. DU MONT LABORATORIES, INC.

No. 13279.

United States Court of Appeals Third Circuit.

Argued October 7, 1960 and May 22, 1961.

Decided November 29, 1961.

Rehearing Denied December 26, 1961.

Thomas Cooch, Weston, Mass. (Robert H. Rines, Boston, Mass., on the brief), for appellant.

Floyd H. Crews, New York City (Darby & Darby, Donald J. Overocker, Gordon D. Coplein, New York City, on the brief), for appellee.

Before BIGGS, Chief Judge, and HASTIE and FORMAN, Circuit Judges.

HASTIE, Circuit Judge.

This appeal has been taken from a judgment of a district court in a patent infringement suit. The trial court held that claims 3, 26, 40, 51, 52, 54-56, and 61-68 of Pierce Patent No. 2,133,642 were invalid for double patenting over the earlier Pierce Patent No. 1,789,496.¹ D.Del.1959, 178 F.Supp. 84. For convenience the numbers of the two patents will be designated throughout this opinion as "'642" and "'496".

Patent '496 was issued in 1931 on an application filed in 1928. It expired some six years before the 1954 filing of the present suit. Patent '642 was issued in 1938 after a considerable history which will be detailed later. That patent expired after the filing, but before the trial, of this case.

I

A preliminary question must be decided because the inventor George Washington Pierce, who filed this complaint, died before trial. Over the objection of the defendant, the court ordered that Pierce's widow and executrix, Helen Russell Pierce, be substituted as plaintiff. D.Del.1957, 154 F.Supp. 368. Although the defendant prevailed on the merits below, it urges as appellee in this court that we need not and should not reach the merits of the appeal, but rather should rule that the cause of action was extinguished by the death of the original plaintiff. This jurisdictional problem is our first concern.

Appellee's argument, that a cause of action for damages for infringement of a patent, which has expired since that infringement, does not survive the death of the owner of the patent, proceeds in two steps. First, it is pointed out that property in patents exists solely by virtue of federal statutory law and that the incidents of that property are defined and determined by the patent statutes. This is the principle of Crown Die & Tool Co. v. Nye Tool & Machine Works, 1923, 261 U.S. 24, 43 S.Ct. 254, 67 L.Ed. 516. Second, it is argued that, since causes of action for patent infringement thus depend upon federal statutes for existence and definition, they must lapse with the death of the patent owner, unless a federal statute affirmatively provides for their survival. This is a non sequitur. Certainly, no such conclusion is required by the Crown Die case, which did not involve the problem of the effect of the death of a patentee upon the statutory right to collect damages for past infringement. Moreover, it is a necessary, if not articulated, premise of appellee's argument that some rule or principle of law outside of the patent statutes cuts off the cause of action when the patent owner dies. This must be the case simply because the patent law itself gives no guidance on this question. Whether the conclusion shall be that the right survives or that it does not, the controlling rule must be derived from a source other than the patent statutes.

In practice, federal courts, required to decide whether various federal statutory causes of action survive, have been explicit and consistent in holding that, where the right-creating statute says nothing about survival, resort to common law conceptions as evolved in English and American decisions is appropriate. Van Beeck v. Sabine Towing Co., 1937, 300 U.S. 342, 57 S.Ct. 452, 81 L.Ed. 685; Schreiber v. Sharpless, 1884, 110 U.S. 76, 3 S.Ct. 423, 28 L.Ed. 65; Sullivan v. Associated Billposters & Distributors, 2d Cir., 1925, 6 F.2d 1000, 42 A.L.R. 503; Walsh v. New York, N. H. & H. R. R., C.C.D.Mass.1909, 173 F. 494, aff'd, 1912, 223 U.S. 1, 32 S.Ct. 169, 56 L.Ed. 327. Such inquiry discloses a common law rule of survival, originally applied to a limited group of damage claims for tortious invasion of property rights, but subsequently broadened toward sanctioning the survival of claims for redress of injuries to monetary interests generally. Van Beeck v. Sabine Towing Co., supra; Kirk v. Commissioner of Internal Revenue, 1st Cir., 1950, 179 F.2d 619, 15 A.L.R.2d 1031.

This approach has resulted in rulings that various federal statutory causes survive without statutory stipulation. The question of survival arises frequently in civil suits for injury to business caused by violations of the antitrust laws. These claims are held to survive. Barnes Coal Corp. v. Retail Coal Merchants Ass'n, 4th Cir., 1942, 128 F.2d 645; Moore v. Backus, 7th Cir., 78 F.2d 571, 101 A.L.R. 379, cert. denied, 1935, 296 U.S. 640, 56 S.Ct. 173, 80 L.Ed. 455; Sullivan v. Associated Billposters & Distributors, supra. In a different area, the Supreme Court has held, and this court has recognized, that a dependent's right under the Merchant Marine Act, 46 U.S. C.A. § 688 and the Federal Employers' Liability Act, 45 U.S.C.A. § 51 et seq. to recover the pecuniary loss he has suffered through the death of the decedent, survives the death of the dependent and may be exercised by his administrator. Van Beeck v. Sabine Towing Co., supra; Wade v. Rogala, 3d Cir., 1959, 270 F.2d 280, 284.²

Of course, the principle "that a patent is property, protected against appropriation * * * by individuals * * * has long been settled." See Hartford-Empire Co. v. United States, 1945, 323 U.S. 386, 415, 65 S.Ct. 373, 387, 89 L.Ed. 322. For purposes of survival we can see no reason for putting actions for damage suffered through patent infringement on a different basis from the above cited invasions of other property rights.

As a separate point appellee argues that the often stated rule that penal claims do not survive is applicable here because the patent statute under which this suit is brought authorizes the recovery of treble damages. However, this argument has not prevailed in the above mentioned situation of treble damage suits under the antitrust laws. Barnes Coal Co. v. Retail Coal Merchants Ass'n, supra. Moreover, the statute involved in the present case lends itself to the separation of the basic compensatory award of actual damages from any permissible additional award of punitive character. The statute provides primarily for the award of "damages adequate to compensate for the infringement". 35 U.S.C. § 284, 1958. Thereafter, it authorizes "the court * * * to increase the damages up to three times the amount found or assessed". Therefore, even assuming that the severable provision for the discretionary multiplication of damages is penal, this affords no justification for cutting off the basic right to compensatory recovery. In the posture of this case no more than that need be decided.

Appellee makes a final argument that the claim for damages for past infringement does not survive because the law does not permit a patentee to assign such a claim apart from the patent itself. However, any considerations of policy which oppose the separation of a cause of action for past infringement from the right of present enjoyment of a patent cease to be relevant after the expiration of the patent has eliminated the right of present enjoyment. It is not surprising, therefore, that such authority as there is on the point supports the assignability of a past infringement claim after the patent has expired. Ross v. City of Fort Wayne, 7th Cir., 1894, 63 F. 466; Tompkins v. St. Regis Paper Co., D.C.N.D.N.Y. 1915, 226 F. 744, aff'd 2d Cir., 1916, 236 F. 221; May v. Saginaw County, C.C.E. D.Mich.1887, 32 F. 629. Thus, it does not help appellee to borrow the rules of assignability as guides to the determination of survival.

Finally, on this entire question of survival no policy consideration has been suggested which would make it unfair to allow a claim for past infringement to be exercised by an administrator in the interest of the estate of a deceased patentee. It is just as undesirable to permit a patent infringer to retain the fruits of his wrongdoing in this situation as it is when the patentee himself is suing. Compare Dellaripa v. New York, N. H. & H. R. R., 2d Cir., 1958, 257 F.2d 733. Thus broad policy and technical analysis both indicate that appellee's contentions are not sound.

We are the more confident of the correctness of our view of this matter because the same result has been reached in carefully reasoned opinions by two of the three district courts which have fully analyzed the problem. Armstrong v. Allen B. Du Mont Labs., Inc., D.Del.1955, 137 F.Supp. 659; Armstrong v. Emerson Radio & Phonograph Corp., S.D.N.Y. 1955, 132 F.Supp. 176. Contra Van Choate v. General Electric Co., D.C.D. Mass.1917, 245 F. 120.

II

We come now to the merits of the controversy. Was the trial court correct in ruling patent '642 invalid for double patenting over the patentee's earlier '496? Both patents embody Pierce's invention of a new method and apparatus utilized in electrical circuits to produce and sustain oscillations at more constant frequency than had theretofore been achievable, particularly in high frequency systems. Because inability to control frequency variations had hampered the development of high frequency radio communication, the effective incorporation of Pierce's invention in both transmitting and receiving circuits was a major achievement in an important field. Pierce's essential teaching was that the introduction of a two electrode piezoelectric crystal of his devising into a vacuum tube circuit as a mechanical vibrator accomplished the desired stabilization. This novel and unquestionably inventive device and procedure for frequency control in oscillating electrical...