Preemption Devices v. Minnesota Min. and Mfg. Co.
| Decision Date | 18 March 1983 |
| Docket Number | Civ. A. No. 80-0268. |
| Citation | 218 USPQ 245,559 F. Supp. 1250 |
| Parties | PREEMPTION DEVICES, INC. v. MINNESOTA MINING AND MANUFACTURING CO. |
| Court | U.S. District Court — Eastern District of Pennsylvania |
COPYRIGHT MATERIAL OMITTED
Zachary T. Wobensmith, III, Wobensmith & Wobensmith, Philadelphia, Pa., for plaintiff.
Joel S. Goldhammer, Seidel, Gonda, Goldhammer & Pautich, P.C., Philadelphia, Pa., for defendant.
Preemption Devices, Inc. ("PDI") seeks a declaration that United States Patent No. RE 28,100 is invalid. Minnesota Mining and Manufacturing Company ("3M"), the holder of the patent, counterclaims, alleging infringement. PDI admits that if the patent is valid, it is guilty of infringement. However, in support of the patent's invalidity, PDI raises five arguments: (1) the invention was on sale in the United States for more than one year prior to the application date; (2) the invention was in public use in this country for more than one year prior to the application date; (3) the invention was obvious; (4) the invention was described in a printed publication more than one year prior to the application date and (5) fraud was committed on the Patent Office during the prosecution of the patent. A bench trial was held. The following constitute the court's findings of fact and conclusions of law pursuant to Rule 52(a) of the Federal Rules of Civil Procedure.
1. PDI is a Pennsylvania corporation with its principal place of business at 3200 North 17th Street, Philadelphia, Pennsylvania 19140.
2. 3M is a Delaware corporation, doing business within the Eastern District of Pennsylvania, with its principal place of business in St. Paul, Minnesota.
3. This court has jurisdiction and venue is proper.
4. On December 22, 1970, United States Patent No. 3,550,078 was issued to William H. Long for a "Traffic Signal Remote Control System." The original patent application was filed on March 16, 1967. While the application was pending, Long assigned his rights under the patent to Light Energy Systems, Inc. ("LES"). Defendant 3M acquired the assets of LES on July 31, 1968, including the right to the patent.
5. The patent laws give inventors a one year grace period within which to conduct certain activities before applying for a patent. Commencement of this one year period is often referred to as the "critical date." Since the patent application was filed on March 10, 1967, the "critical date" in this case is March 16, 1966.
6. On July 13, 1973, 3M as holder of the patent, filed an application for its reissue. The application was granted and on August 6, 1974 Patent No. RE 28,100 was issued.
7. The patent examiner cited or considered the following prior art during the prosecution of Patent No. RE 28,100:
Patent Number Date Inventors Name
3,278,895 10/1966 Pfund
3,257,641 6/1966 Campana, et al
3,247,482 4/1966 Lesher
3,209,325 9/1965 Mentzer, et al
3,114,127 12/1963 Ramsey
2,903,674 9/1959 Schwab
2,881,409 4/1959 Cook, et al
2,457,502 12/1948 Shepherd
2,355,607 8/1944 Shepherd
2,203,871 6/1940 Koch
2,936,387 5/1960 Steele, Jr., et al
2,173,596 1/1939 Shepherd
Foreign References
478,924 1/1938 United Kingdom
310,373 12/1955 Swiss
8. 3M manufactures and sells a system incorporating the invention under the trademark "OPTICOM." This trademark was also acquired from LES. (The invention will be referred to by its trademark, Opticom, for convenience).
9. In 1962, Martha H. Engry and Michael J. Manchester formed Rad-O-Lite of Philadelphia, Inc., which was in the business of developing, manufacturing and selling radio controlled traffic signal remote control systems. In January of 1978, they formed PDI.
10. Shortly after its incorporation in 1978, PDI began marketing and selling a light activated traffic signal remote control system, which admittedly infringes upon the patent.
11. Opticom is a priority device which enables emergency vehicles to control the color shown on traffic lights, in favor of their direction of travel, by phasing the traffic signal through its normal sequence. This allows the vehicle to proceed to its destination without risking intersectional collisions with vehicles approaching from cross streets. A vehicle equipped with Opticom finds the light green in either direction on the street on which it is traveling, with the signal showing red for the cross traffic. The light remains green only for as long as it takes the ambulance, police car or fire engine to cross through the intersection.
12. Opticom is comprised of a light source, a receiver, and computer circuitry. A flashing high intensity light, which flashes at a predetermined pulse rate, is mounted on the emergency vehicle. Both the receiver and computer control module are located at or near the traffic light. They are external to the signal controller. The receiver is sensitive only to the kind of high intensity light emitted from the transmitter. The computer control module is able to sense the phase of the traffic light — whether it is red, amber or green. This is accomplished by circuitry which is connected across the lamps on a traffic light. When a light shows red, the mechanism attached to the red lamp "senses" the increased voltage and the computer, therefore, "knows" that the light is red. The "phase selection" circuitry then commands the controller within the signal to cycle ahead to the desired color.
13. PDI contends that Opticom is little more than an improvement over prior remote control traffic systems. Specifically, PDI points to the teachings of the Shepherd and Ramsey patents, which both predate the Long patent. Through the testimony of their expert, Dr. Arthur Larkey, PDI endeavored to prove that the circuitry and phase selection capability of the Shepherd and Ramsey patents are functionally similar to those of the Long patent. Dr. Larkey is a professor of electronic engineering, having earned a Ph.D. in that field. However, he admittedly has no training or experience in traffic engineering or with remote control traffic devices. By contrast, 3M's expert, Dr. Parsonson, also a Ph.D., has had vast experience in all phases of traffic engineering, is well versed in various types of traffic control priority systems and has been working with such devices since the mid-1960's. Dr. Parsonson also teaches courses involving traffic engineering, traffic signalization, highway design and computerized traffic signal control. I find his expertise in the area of traffic control devices is far superior to that of Dr. Larkey's and thus his testimony is deserving of additional weight on that subject. I credit Dr. Parsonson's opinion that given the Shepherd and Ramsey patents and the state of the art in the mid-1960's, the innovations made by the Long patent would not have been obvious to a person of ordinary skill in the field.
14. According to Dr. Parsonson, the Shepherd and Ramsey patents do not teach phase selection. I agree and find that both patents teach preemption. The distinction between phase selection and preemption focuses largely upon a device's effect on a traffic signal's internal controller. A preemption device, as its name implies, "preempts" or substitutes another controller for the signal's own internal mechanism. Opticom activates the existing controller within a signal, commanding it to run through its cycle at an accelerated pace. Preemption systems require physical modification of the internal controller of a traffic signal. Phase selection devices are external, leaving the internal mechanisms of signals untouched. Devices built pursuant to the Shepherd or Ramsey patents cannot sense what is the present phase of the light, nor is it necessary for them to do so. Preemption controllers simply take over and change the light to the desired phase. A phase selection device such as Opticom senses the present phase of the traffic light and utilizes the signal's own mechanism to obtain the desired light phase.
15. The Shepherd patent, the earliest of the three, teaches activation by either sound, radio or light, apparently having no preference for any one of the three. However, unlike the Long patent, the suggested light source is not a high intensity lamp, but rather a discharge tube of a suitable gas. By not utilizing high intensity light, there is a substantial risk that a Shepherd device could be triggered by extraneous light sources, such as the sun or vehicle headlights.
16. The Ramsey patent utilizes radio signals. However, radio signals by their nature may cause the triggering of traffic lights on parallel streets. This problem is heightened when an omni-directional signal is used, as by definition, that type of signal is transmitted in all directions. A Ramsey device is activated by pushing one of three buttons, depending upon the direction in which the emergency vehicle is proceeding. A button must be depressed at each intersection and if the wrong one is depressed, the lights will change in a pattern other than the one desired. The operator will have to wait fifteen seconds before pressing the correct button and raise a favoring green light. By contrast, while operating Opticom, knowledge of the direction of travel is not required nor must anything be done at each intersection. Once activated, the system will command each light as the vehicle approaches the intersection, leaving unaffected lights behind the vehicle or on parallel streets.
17. The most crucial difference between Shepherd and Ramsey on one hand and Opticom on the other is what drivers will face at a traffic signal when each is in operation. A system based upon Shepherd will immediately change all four lights red, or three to red with one green, in favor of the emergency...
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