Ruben Condenser Co. v. Aerovox Corporation

• Decision Date: 13 May 1935
• Docket Number: No. 337.,337.
• Citation: 77 F.2d 266
• Parties: RUBEN CONDENSER CO. et al. v. AEROVOX CORPORATION.
• Court: U.S. Court of Appeals — Second Circuit

77 F.2d 266 (1935)

RUBEN CONDENSER CO. et al. v. AEROVOX CORPORATION.

No. 337.

Circuit Court of Appeals, Second Circuit.

May 13, 1935.

Morris Hirsch, Oscar W. Jeffery, and Dean, Fairbank, Hirsch & Foster, all of New York City, for appellant.

Watson, Bristol, Johnson & Leavenworth, of New York City (Charles P. Bauer, of New York City, Leon Robbin, of Washington, D. C., and Laurence Bristol, of New York City, of counsel), for appellees.

Before L. HAND, SWAN, and CHASE, Circuit Judges.

L. HAND, Circuit Judge.

The plaintiffs sued the defendant in Brooklyn upon patent No. 1,891,207; the defendant counterclaimed upon two patents, Nos. 1,815,768 and 1,789,949. The judge passed a decree holding the plaintiffs' patent valid and infringed and dismissing the counterclaim. The defendant appealed. We need discuss only the plaintiffs' patent, because we dispose of the counterclaim on other grounds. All the patents are for improvements in dry electrolytic condensers; the defendant's are the same as those concerned in a suit brought by it against the Concourse Electric Company and decided by this court in 65 F.(2d) 386; we may refer to what we said there by way of general background for our discussion. The plaintiffs' patent is for another electrolyte, the viscous compound with which the fabric is saturated which separates the anode and the cathode plates, and which serves to restore the film upon the anode if it is broken through. It does not too much simplify the facts to say that the invention consisted only in substituting glycol in the place of glycerin in the electrolyte; for the other ingredients, boric acid and ammonium borate, were concededly old in the art. Glycol has undoubtedly generally superseded glycerin since the plaintiffs introduced it and was an advance in the art; moreover, it was new in a dry electrolyte when Ruben filed his application on June 19, 1930. But it had been disclosed as part of the electrolyte of a wet condenser twice before; first, by Engle in patent No. 1,672,714, application for which was filed on August 29, 1927; and again by Fansteel, in a British patent No. 319,033 of 1929, the application for which was filed on May 15, 1928. Both disclosures mention glycol as an optional substitute for glycerin, obviously regarding the two as interchangeable and readily suggested alternatives. And indeed although the claims in suit prescribe glycol, other claims are for glycerin in its place, and the specifications make it plain that though glycol was preferred, glycerin would serve. Thus at page 1, lines 78-87: "In the invention the viscous material is not confined to ethylene glycol for glycerine and various other glycols or glycerols are applicable; after many tests, however, ethylene glycol was found to give the best results. Electrolyte compositions prepared with the use of glycerols in lieu of glycols, with the proportions of the ingredients remaining substantially the same, appear to be thicker, that is, to have a lower degree of flowability." It was apparently because of its greater "flowability" that Ruben preferred glycol. The substance had been known for long in laboratories, but its large-scale production only dates from about 1921, within a few years after which it began to arouse interest in its practical uses, as appears from several papers which were put in evidence describing its possibilities. It may be assumed to have become cheap enough for use in such arts as these not very long before Ruben filed his application, though the date does not definitely appear in the record. (The bills in evidence do not bear out the conclusion that there was a very substantial fall in its value after July, 1930.) We know just how Ruben came upon it. He was a very prolific inventor and he directed an assistant, Raines, to carry on a series of parallel experiments in electrolytes with glycerin and with glycol; Raines found that the glycol had a better "leakage characteristic," and the art has confirmed his conclusions.

In the light of all this it seems to us that the patent does not rest upon an authentic invention, but upon one of those steps in an art which demand only patient experiment. Especially in chemistry it is possible to proceed by a system of trial and error, varying formulas by permutation and combination, and recording the results of each. Much that is valuable has been so discovered, and we will not say that the profitable survivals from such elimination can never be inventions; salvarsan for example, as its other name, "606," indicates, was hit upon by this method. Ordinarily invention demands more than that; some resumption of a line of experiment from which the art had looked away E. I. Dupont De Nemours & Co. v. Glidden Co., 67 F.(2d) 392, 397 (C. C. A. 2), some departure which required originality or independence of conception; something more than routine testing of obvious combinations. Here we can find nothing more. The defendant itself tried out glycol and abandoned the experiment, because uncertain of the merchantable quality available and because its customers were reasonably satisfied with glycerin. Indeed, Georgiev's own electrolyte patent No. 1,815,768 suggested glycol as a possible substitute six months later, and though he also included glucose which was not satisfactory, the suggestion shows that the mere conception was commonplace enough. Such invention as there was, lay in the verification. While it is always the safest course to test a putative invention by what went before and what came after, it is easy to be misled. Nothing is less reliable than uncritically to accept its welcome by the art, even though it displace what went before. If the machine or composition appears shortly after some obstacle to its creation, technical or economic, has been removed, we should scrutinize its success jealously; if at about the same time others begin the same experiments in the same or nearby fields, or if these come to fruition soon after the patentee's, the same is true. Such a race does not indicate invention. We should ask how old was the need; for how long could known materials and processes have filled it; how long others had unsuccessfully tried for an answer. If these conditions are fulfilled, success is a reliable touchstone; but success in the circumstances at bar proves nothing. The patent is invalid.

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