Ruben Condenser Co. v. Copeland Refrigeration Corp.

• Decision Date: 22 August 1935
• Docket Number: No. 7288.,7288.
• Parties: RUBEN CONDENSER CO. et al. v. COPELAND REFRIGERATION CORPORATION.
• Court: U.S. District Court — Eastern District of New York

15 F. Supp. 261

RUBEN CONDENSER CO. et al. v. COPELAND REFRIGERATION CORPORATION.^*

No. 7288.

District Court, E. D. New York.

August 22, 1935.

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

Merrell E. Clark, of New York City, and R. E. Fidler, of Chicago, Ill. (Harold F. Watson, of New York City, of counsel), for defendant.

CAMPBELL, District Judge.

This is an action based on the alleged infringement of patent No. 1,710,073, issued to Samuel Ruben, for electrical condenser, granted April 23, 1929, on an application filed March 21, 1927; and patent No. 1,714,191, issued to Samuel Ruben, for electrical condenser, granted May 21, 1929, on an application filed December 22, 1926, by the defendant Copeland Refrigeration Corporation, in the sale of certain dry electrolytic condensers in conjunction with electric motors supplied by Delco Products Corporation, some of which electrolytic condensers were manufactured by Delco Products Corporation, and some by Aerovox Corporation, of Brooklyn, N. Y.

No further consideration as to those manufactured by Aerovox Corporation is necessary, as it was licensed under the patents Nos. 1,710,073 and 1,714,191 in suit, and the charge of infringement as to those condensers was limited to the Ruben patent, No. 1,891,207, and by stipulation the decree in this case as to Aerovox condensers is to conform to the decree in the case of Ruben Condenser Co. and Mallory v. Aerovox Corporation, 77 F.(2d) 266, in which case the Circuit Court of Appeals of this Circuit has held the Ruben patent, No. 1,891,207, invalid.

The plaintiff Ruben Condenser Company is the owner of the patents in suit, and the plaintiff P. R. Mallory & Co., Inc., is the holder of an exclusive license under the patents in suit, with the right to grant sublicenses.

Condensers manufactured and sold by the Mallory Company are marked with the numbers of the Ruben patents, 1,710,073, 1,714,191, and 1,891,207; those manufactured and sold by the Aerovox Company under license are marked with the Ruben numbers 1,710,073 and 1,714,191, and those manufactured and sold by the Sprague Specialties Company and Magnavox Company, under license, are marked with the numbers of Ruben patents, 1,710,073 and 1,714,191.

The defense of this suit is being conducted by Delco Products Corporation.

This suit is based on claims 2, 5, 6, 7, and 8 of the Ruben patent, No. 1,710,073, and claims 4, 5, 6, and 7 of Ruben patent, No. 1,714,191.

The defendant has interposed an answer alleging the defenses of invalidity, double patenting, and noninfringement.

The patentee in his specification of patent No. 1,710,073 says:

"This invention relates to electric condensers and has for an object the provision of a suitable spacer, for use particularly in separating the electrode plates of a condenser containing a fluid or semifluid dielectric or electrolyte medium, which will not react electrically with the electrode surfaces.

"Another object is the provision of an electrical condenser having both a relatively high capacitance when used in alternating current circuits and a high direct current storage capacity which possesses long life with good operating characteristics over a wide range of atmospheric conditions.

"Another object is the provision of an electrolyte composition for an electrolytic condenser which will possess long life and will automatically and quickly revive itself after any temporary removal of its water of solution."

He further says: "Briefly these objects are accomplished by employing electrode plates at least one of which (preferably the anode) is a film-forming composition, separating said plates uniformly by a retiform or textural spacer which has been treated so that its individual fibres are coated with a non-conductive film, coating the spacer with an electrolyte in the form of a paste containing a film-forming electrolyte suspended or mixed with a stable hygroscopic material of preferably high viscosity, as glycerine, and applying a uniform pressure to the condenser plates or elements to insure continuous contact between the electrolyte and the electrodes or electrode coatings."

The patentee in the specification of the patent No. 1,714,191 says:

"This invention relates to electrostatic condensers, and it relates more particularly to electrical condensers of the electrolytic type.

"According to the terms of my invention the device consists of film-forming electrodes separated by an electrolyte composed of an hygroscopic material with a small percentage of a stablizing solution and a neutral or slightly alkaline salt in suspension with said stabilizing solution and said hygroscopic material and held in a fixed paste-like density and concentration by an insulating gauzelike textile, and suitable pressure applied to maintain close surface contact between the electrolyte and the electrodes."

He further said: "For the electrode material I prefer thin aluminum sheets having an oxide film formed upon the surfaces before assembly, and as the electrolyte, glycerin having a relatively small amount of water and having mixed therewith suspended powdered sodium bicarbonate, a small percentage of boric acid being present to stabilize the paste which has a sodium borate content due to reaction of the boric acid with the sodium bicarbonate and to increase the conductivity of the mixture."

According to the stipulation (Exhibit 9) the Delco condensers are manufactured as follows:

"1. Two strips of aluminum foil are provided with a suitable dielectric film by means of a suitable film-forming process.

"2. Two strips of the filmed aluminum foil and two strips of 80×80 mesh cloth (80 threads per inch, in each direction) are arranged as alternate layers, and the desired length of the composite strip thus formed is wound upon an arbor, suitably fastened, and removed from the arbor.

"3. The resulting unit, called a section, is then immersed for about 5½-7½ hours in an electrolyte comprising 65% glycerin (C. P.) and 35% ammonium borate (Pacific Coast Borax Co.), which electrolyte is constantly agitated and maintained continuously at a temperature of approximately 235° F. The electrolyte has a specific viscosity between 8 and 9, as measured by a Saybolt Viscosimeter at 200° F. and compared with the viscosity of water at 60° F.

"4. After impregnation as described, the section is permitted to drain and cool, is reformed, tested and wrapped in varnished cloth, and is placed in a suitable leak-proof container, the lid of which is soldered in place. Prior to the soldering operation the two aluminum strips are connected to suitable terminals extending through the lid of the container."

The Delco condenser (Exhibit 21), similar to Plaintiffs' Exhibit 8, as sold by the defendant Copeland Refrigeration Corporation within the Eastern District of New York, was opened in court and comprised two aluminum foils, each provided with a dielectric film, interleaved with two gauze spacers, rolled up and impregnated with an electrolyte.

The electrolyte was of a viscous paste-like consistency.

The rolled condenser section was wrapped in black varnished cloth, then in corrugated waxed paper or cardboard, and inclosed in a tin can, the inside of which was coated with a black lacquer or enamel. From each aluminum foil projected a tab, which was connected with a threaded stud passing through the top of the can.

As to the rolled condenser section, insulating wrapping inclosing metal container, and connection of the foils with threaded studs passing through the top of the can, the Delco structure is a practical duplicate of that shown and described in the patents in suit.

The Delco condenser is quite similar in construction to the Aerovox condenser, the Delco electrolyte being more sticky and less fluid than the Aerovox electrolyte. Both the Delco and Aerovox condensers are obviously used to perform the same function in connection with motors manufactured by Delco Products Corporation.

The two Ruben patents, Nos. 1,710,073 and 1,714,191, in suit were discussed by the Circuit Court of Appeals for the Second Circuit, in the case of Aerovox Corporation v. Concourse Electric Co., 65 F. (2d) 386, 387, 389.

Uncontested decrees have been entered in the six following entitled suits, upholding the validity of the Ruben patents, Nos. 1,710,073 and 1,714,191, in suit:

Howell Electric Motors Company, consent decree.

Polymet Manufacturing Corporation, decree after inquest.

Century Radio Products Co., Inc., decree after inquest.

Polymet Manufacturing Corporation, decree pro confesso.

Alan Radio Corporation, consent decree.

Samuel Roth (federated purchaser), decree pro confesso.

The term "dry electrolytic condensers" is generally used in the trade to differentiate from the well-known wet electrolytic condensers of the prior art, and is so used here.

With the exception of Edelman's rockhard A-condenser, however, the so-called dry electrolytic condensers contain an electrolyte of viscous paste-like consistency, but are dry enough to permit of their being packaged without the necessity for leak-proof containers which are required with wet electrolyte condensers.

The sales of the plaintiff P. R. Mallory & Co., Inc., and its licensees, of condensers marked under the patents in suit, from January 1, 1931, through the first quarter of 1935, were in excess of $8,000,000, and the royalties paid for that period exceed $350,000, and in addition approximately $90,000 has been paid by licensees as part consideration for the execution of their license contracts. From the end of 1926 and through 1930, the Grigsby-Grunow-Hinds Company paid about $35,000 in royalties under its license.

Most of the licensees with the exception of the Aerovox Company are licensed not only under the patents in suit, but under fourteen other patents, including...