SEALECTRO CORPORATION v. LVC Industries, Inc.

• Decision Date: 01 May 1967
• Docket Number: No. 65-C-992.,65-C-992.
• Citation: SEALECTRO CORPORATION v. LVC Industries, Inc., 271 F. Supp. 835 (E.D. N.Y. 1967)
• Parties: SEALECTRO CORPORATION, Plaintiff, v. L. V. C. INDUSTRIES, INC., Defendant.
• Court: U.S. District Court — Eastern District of New York

271 F. Supp. 835

SEALECTRO CORPORATION, Plaintiff, v. L. V. C. INDUSTRIES, INC., Defendant.

No. 65-C-992.

United States District Court E. D. New York.

May 1, 1967.

Gordon, Brady, Caffrey & Keller, New York City, Roland T. Bryan, Stamford, Conn., for plaintiff.

William Anthony Drucker, New York City, for defendant.

Decision and Order

ROSLING, District Judge.

Motion by defendant L. V. C. Industries, Inc. "LVC" pursuant to Fed.R. Civ.P. 56 for summary judgment declaring United States Patent 3,145,329 "-329" issued to plaintiff Sealectro Corporation "Sealectro" invalid is denied.

The complaint charges defendant with infringement of -329. Defendant's denial of infringement and its averments of invalidity on various grounds other than the one immediately to be discussed do not enter into this determination. The pivotal issue is found in LVC's contention that -329, apart from all other invalidating circumstances, was rendered invalid by reason of the alleged fact that "plaintiff filed a corresponding application prior to six months after filing a patent application in the United States for an invention made in the United States without applying for and obtaining from the Commissioner of Patents a license to file a foreign patent application as required by 35 U.S.C. 184 and 185."

The sections of the Patent Law cited which are set out in the appended footnote¹ are found in Chapter 17 entitled "Secrecy of Certain Inventions and Filing Applications in Foreign Country." The referent provisions were enacted shortly after the close of the Second World War, and were with their companion provisions intended to prevent disclosure of information which through premature publication might adversely affect the welfare of the country.

Plaintiff in its opposition to the motion contends that section 184 does not apply to its invention inasmuch as it was not "made" in the United States. Not only does the section itself in its opening sentence limit its applicability to "an invention made in this country," but the "Regulations Relating to Secrecy of Certain Inventions and Licenses to File Applications in Foreign Countries" are unambiguous in that regard. 37 C.F.R. § 5.11 declares in pertinent part that "when there is no secrecy order in effect"—and there was none—a license under 35 U.S.C. 184 is not required if

"(1) The invention was not made in the United States."

The relevant chronological and geographical facts other than the answer to the critical question as to where the invention was "made"—i. e. whether in the United States or in a foreign country —are not in dispute. An answer to the residual question, however, can be supplied only when the mixed question of law and fact has been resolved upon a trial.

The foreign patent was of British record. It was applied for by the inventors in England on February 2, 1960; complete specification was filed on February 1, 1961, and issuance as a British Patent No. 944,657 followed.

Application for the United States patent here in suit was filed on February 1, 1961, and the patent issued as -329 on August 18, 1964.

The identical invention is covered by both British and domestic patents.

It is thus seen that the British filing not only was prior to the expiration of six months after the United States filing, but in fact preceded such domestic filing by a year.

It does not appear that the invention, a "diode receptacle for holding a semiconductor rectifier," dispensing with the necessity for soldering connections or melting the solder for removal of the diode, procedures which endanger the device, falls within the restrictions of § 181 against patenting whereby secrecy is maintained in the interest of national security. Hence § 184 licensing for foreign patenting, if applied for, would have presented no problem. Retroactive licensing, moreover, is even now a possibility under the same provision should plaintiff elect to proceed in such fashion. Plaintiff, which admittedly did not apply for a license prior to the British filing, has declared in answer to interrogatories propounded to it by defendant that it does not propose to seek such retroactive grant of a license.² Plaintiff's attitude is unqualifiedly that the patent was in a § 184 sense "made" in Great Britain, and hence required no United States licensing for validity of the domestic patent.

The patents name as the inventors Stanley Thomas Deakin, a British subject resident in England, and Albert E. Powell, a citizen of the United States resident in the State of New York.

Plaintiff has filed an affidavit³ of Deakin, the British half of the team, reciting the following:

Deakin and plaintiff Sealectro are patentees of the British Patent, application for which was filed February 2, 1960. Deakin and Powell are the patentees of the corresponding United States Patent, for which application was originally filed February 1, 1961. Powell was at the time of the "making" of the invention vice-president in charge of engineering of plaintiff and simultaneously Deakin's "policy supervisor."

The affidavit continues:

"4. At the time of the making of the invention, the plaintiff was operating in the United Kingdom as a branch of the American company with said Powell as vice president in charge of engineering of the company, devoting a portion of the time to supervising the engineering activities in the United Kingdom;

"5. In the course of my engineering activity for the British branch of the plaintiff, I communicated to said Powell the fact that I had conceived the idea of combining an electrical component, such as a diode with a two-contact jack plug;

"6. That said Powell and myself had correspondence concerning the details of the design of such plug and the device into which such a plug would be fitted, all as a normal part of the operation of the British business of the plaintiff;

"7. The decision to incorporate some of the detailed design information that was contained in said Powell's memorandum of March 22, 1960, into the `Complete Specification' that was necessary to be filed under British law, was made to illustrate the scope of the invention that was described by words in the Provisional Specification that was filed February 2, 1960, in the United Kingdom;

"8. The first reduction to practice of the invention by the making of models and the production of plugs was first done in the United Kingdom;

"9. The engineering content of the aforesaid Complete Specification, filed in Great Britain, and the essentially duplicate disclosure contained in the patent in suit were the joint efforts of said Powell and myself."

Powell's memorandum of March 22, 1960, plaintiff's "enclosure 6," referred to in paragraph 7 of Deakin's affidavit, is assigned a key role by defendant in the maintenance of the thesis that the invention, at least in part, was "made" in the United States.⁴

In "Fact No. 1" of its "Statement of Facts," the statement appears that "the attached copy of plaintiff's `Enclosure 6', referred to in the attached copy of plaintiff's answer to defendant's interrogatory Number 17 as the `Powell memorandum', shows that the embodiment^* of Figure 2 of United States Patent No. 3,145,329 was made by Powell in the United States."

Defendant has not submitted as part of its moving papers the interrogatories it propounded, nor a copy of all the answers elicited thereby from the plaintiff. Lacking, too, is any clear reference by either party in any paper filed herein indicating that it was the intent of a party that the Court was to consider as Rule 56 material anything beyond the fragmentary and ambiguous excerpts from plaintiff's responses to the interrogatories.

At all events, answer 16, which is before the Court, is precise in its averment that it was the conception of the embodiment and not the embodiment itself of Figure 2 which was made in the United States, whereas the "structural details of the embodiment as shown in Figures 1, 2 and 4 of Patent No. 3,145,329 appear to have been the result of the joint endeavors of Messrs. Deakin and Powell and their attorneys, both in the United States and in Great Britain."

Answer 17 to which movant points and copy of which it similarly annexes furnishes no greater support than 16 for its assertion that the answer establishes that the embodiment of Figure 2 was made in the United States. Such answer reads:

"17. As to claims 1, 2, 3 and 5, plaintiff adopts its answer No. 2 from its previous answers to interrogatory No. 2 of defendant and adds thereto that the initial work was done by S. T. Deakin in Great Britain and the Powell memorandum was prepared in the United States. A. E. Powell was vice president of Sealectro Corporation in charge of engineering and as such it is believed that he was aware of the developments that were being carried out in Great Britain and in the United States. Plaintiff, as presently advised, is aware of Messrs. Deakin and Powell being together in the same country only once and that was during the middle of October 1960 in the United States."

The significance of the reference to "answer No. 2." is unclear inasmuch as such answer is not reproduced in the papers before the Court.⁵

Enclosure 6, the third and last of the items, submitted by defendant in support of its Fact No. 1, does not, whether in or out of the context of answer 17, sustain defendant's averment "that the embodiment of Figure 2 * * * was made by Powell in the United States" nor, a fortiori, that the invention was "made" in the United States.

Plaintiff's position as declared in its answer 16, is that the "answer to the question as to the place of the invention requires a legal conclusion." With greater propriety it may well here be categorized as a mixed question of law and fact. The denial of the motion for summary judgment serves to narrow the scope of a brief on the law to what will ultimately on trial be found by the Court to be the facts with respect to the competing geography wherein the...