Sperry Products, Inc. v. Aluminum Company of America
| Decision Date | 06 January 1959 |
| Docket Number | Civ. A. No. 31352. |
| Citation | 171 F. Supp. 901 |
| Parties | SPERRY PRODUCTS, INC., et al., Plaintiffs, v. ALUMINUM COMPANY OF AMERICA and Electrocircuits, Inc., Defendants. |
| Court | U.S. District Court — Northern District of Ohio |
COPYRIGHT MATERIAL OMITTED
Charles B. Gordon, Ely, Pearne & Gordon, Cleveland, Ohio, R. Morton Adams, J. Philip Anderegg, Pennie, Edmonds, Morton, Barrows & Taylor, New York City, for plaintiffs.
Carlton Hill, Hill, Sherman, Meroni, Gross & Simpson, Chicago, Ill., William L. Hanaway, Breed, Abbott & Morgan, New York City, Thomas J. Doran, Hyde, Meyer, Baldwin & Doran, Cleveland, Ohio, for defendants.
This is an action for infringement of four patents of plaintiff, Floyd A. Firestone, Nos. 2,280,226, 2,398,701, 2,467,301 and 2,592,134, which will be referred to sometimes hereinafter as Nos. 1, 2, 3 and 4. All of the patents relate to flaw detection apparatus and the use thereof. The Claims of the patents which it is alleged were infringed are Patent No. 1, Claims 2, 3, 4, 10 and 11; Patent No. 2, Claims 7, 16, 19, 20, 25, 26, 29 and 32; Patent No. 3, Claims 1, 2 and 3; Patent No. 4, Claim 2.
The plaintiffs are: Floyd A. Firestone, inventor of all four patents in suit and the owner of the legal title to Patent No. 1; Sperry Products, Inc., a New York corporation, the exclusive licensee under Patents 1 and 2, and the owner of Patents 3 and 4; United Aircraft Corporation, a Delaware corporation, the owner of Patent No. 2, and present here as an involuntary party plaintiff.
The defendants are: The Aluminum Company of America (hereinafter called Alcoa), a Pennsylvania corporation, with a place of business at Cleveland, Ohio, where it has used the accused apparatus known as an Immerscope; and Electrocircuits, Inc., maker and supplier to Alcoa of such apparatus. Electrocircuits is a California corporation, having no place of business in the jurisdiction of this Court but became a party by the voluntary filing of an Answer and Counterclaim.
The Complaint alleges infringement of the Claims enumerated above. The Answer denies infringement and alleges invalidity of the patents on several grounds, including alleged misrepresentations to the Patent Office, lack of invention, anticipation by prior patents and publications, ambiguity, failure to fully disclose invention and misuse of the patents. A counterclaim filed by Electrocircuits for treble damages alleges that damages were sustained by that defendant as a result of the violation by plaintiffs of the antitrust laws. The affirmative defenses alleged in the Answer and the alleged violation of the antitrust laws set forth in the Counterclaim of Electrocircuits are denied by plaintiffs. Thus, the principal issues are: Invalidity, infringement, alleged misuse of the patents and alleged violation of the antitrust laws.
The devices described by the patents in suit which are sold under the trade name "Reflectoscope" are instruments that use the pulse echo ultrasonic method in the detection of flaws in metal parts. By this method ultrasonic sound waves having a higher frequency than that audible to the human ear and capable of penetrating solid, liquid or gaseous material are propagated into a metal part. The waves travel through the part at a known speed of propagation characteristic of the material of the part under inspection. When the waves reach the opposite end of the part or when they encounter discontinuities or flaws therein their echos are reflected back to the face of the part. The reflections from flaws nearest the entering end of the part arrive at that point before the reflections from discontinuities farther away and sooner than the reflections from the opposite end of the part. As these various reflections reach the entering end of the part they are amplified and by means of a sweeping motion of a beam of cathode rays they are registered on a cathode ray oscilloscope in a manner that permits the determination of the time of travel of the waves and the location of flaws in the part. In order to measure accurately the time of travel of the waves to and from the reflecting surfaces, it is necessary to propagate them in short bursts or pulses to permit the reception of the reflected echo prior to the propagation of a subsequent pulse, hence the term "pulse echo."
In the early 1950's Donald Erdman, a former president and founder of Electrocircuits, developed a so-called Wide Band Converter. This device had the circuitry necessary to produce ultrasonic vibrations as high as 25 megacycle frequency and the apparatus to amplify and receive the electrical impulses generated by the returning echoes. The wide band converter was used primarily for detecting flaws in parts by placing the part to be inspected under water. In 1952, when Electrocircuits was ready to place its device on the market, Richards, then president of Electrocircuits, conferred with Farwell, president of Sperry, with the view of effecting an arrangement that would enable Electrocircuits to sell its apparatus without being sued for infringement by Sperry. Richards proposed that Sperry license the Firestone patents to Electrocircuits or, in the alternative, that Electrocircuits sell its apparatus to Sperry for resale by the latter. Both proposals were rejected by Sperry. Later an agreement was reached by the terms of which Sperry agreed to permit Electrocircuits to sell its device but only upon condition that each wide band converter would be used in conjunction with a Sperry Reflectoscope. Under this arrangement the only part of the Reflectoscope that was used was the cathode ray oscilloscope. All other functions of the dual apparatus were performed by the wide band converter, the Reflectoscope being 80% useless. This arrangement was effective for but a substantially short time, after which Electrocircuits placed the accused Immerscope on the market.
Some of the accused devices were sold to the defendant Alcoa and used by it in its plant in Cleveland, Ohio. This suit followed. Electrocircuits was unable financially to defend this action and entered into a contract with Curtiss-Wright Aircraft Corporation, by the terms of which Curtiss-Wright agreed to finance the defense of the litigation. As a part of this agreement Curtiss-Wright was granted the right to manufacture and sell Immerscopes upon the payment of royalties to Electrocircuits. The Immerscope is a device used primarily in under-water inspection of metal parts but it is used also for flaw detection where the part to be inspected is not submerged. It is plaintiff's claim that the Immerscope is in all respects the equivalent of the device described in the claims of the Firestone patents in suit.
Defendants direct their heaviest fire against the validity of the patents, about 80% of their voluminous brief being devoted to a discussion of that issue. Their defense against the charge of infringement is generally that the Immerscope follows the prior art rather than the teachings of the Firestone patents. Additionally they rely upon a number of separately stated grounds to avoid infringement of some of the many claims in suit.
The issues raised by the defense of misuse of the patent and Electrocircuits' counterclaim based upon an alleged violation of the antitrust laws have been dealt with in separate briefs. Accordingly, in this opinion the issues of validity and infringement will be discussed in that order and will be followed by an inquiry into the merits of the allegations of misuse of the patents and those relating to the alleged violation of the antitrust laws.
Defendants' first ground of attack on the validity of Patent No. 1 is based upon the claim that Dr. Firestone made misrepresentations to the Patent Office in relation to submarine sounding devices, particularly that of Langevin, et al., Patent No. 1858931, issued May 12, 1932, that induced the Examiner to approve the issuance of the patent applied for by Firestone. The application was filed May 27, 1940. By Patent Office action of August 6, 1940 several of the claims were rejected on prior art, including Langevin. On January 18, 1941 Dr. Firestone requested reconsideration of the rejected claims, and in support thereof submitted an extensive argument in which, among other things, he delineated the critical differences between Langevin and the invention described in Firestone's application. The Langevin invention is an apparatus for depth sounding and the location of submarine obstacles by means of ultra audible waves. It is intended for use in the ocean and other navigable waters to insure greater safety in navigation but was not designed to function as an instrument for the detection of flaws in metal parts. In his argument to the Examiner Dr. Firestone said, inter alia:
To continue reading
Request your trial
-
Eversharp, Inc. v. Fisher Pen Co.
...239 (1961); Apex Electrical Mfg. Co. v. Altorfer Bros. Co., 238 F.2d 867, 872-3 (7 Cir., 1956); Sperry Products, Inc. v. Aluminum Company of America, 171 F. Supp. 901, 929, 940 (D.C.Ohio, 1959) rev. in part on other grounds 285 F.2d 911 (6 Cir., 1960). 47. Infringement suits which are initi......
-
Blohm & Voss AG v. Prudential-Grace Lines, Inc.
...... brought by plaintiff Blohm & Voss AG, a German company having its principal place of business and shipyard at ... patent in suit to improperly control unpatented products. . 5. Imposed territorial and customer ...53 . Hamburg America Line, the purchaser of the first pendulum-block gear, was ...Sperry Rand Corp., 444 F.2d 406 (4 Cir. 1971). . ...v. Aluminum Company of America, 171 F.Supp. 901, 936-938 (N.D.Ohio ......
-
Printing Plate Supply Co. v. Crescent Engraving Co.
...had illegal consequences, and Campbell v. Mueller, 159 F.2d 803, 806-807. The following quotation from Sperry Products, Inc. v. Aluminum Co. of America, D.C., 171 F.Supp. 901, aff'd. in part, rev'd. in part, Aluminum Co. of America v. Sperry Products, Inc., 6 Cir., 285 F.2d 911, cert. den. ......
-
Aluminum Company of America v. Sperry Products, Inc.
...that under the circumstances such representation was not a material departure from the true measuring capability of patent No. 1." D.C., 171 F.Supp. 901, 908. And at page 910, 171 F.Supp.: "A fair analysis of the record leads to the conclusion that defendants have failed to sustain their cl......
-
Table of cases
...800 (Fed. Cir. 2000), 267 Spectrum Sports v. McQuillan, 506 U.S. 447 (1993), 16, 30, 31, 172, 217 Sperry Prods. v. Aluminum Co. of Am., 171 F. Supp. 901 (N.D. Ohio 1959), aff’d in part and rev’d in part , 285 F.2d 911 (6th Cir. 1960), 141 Stambler v. Diebold, Inc., 1988 WL 95479 (E.D.N.Y. 1......
-
United States Law and the Proposed Code of Conduct on the Transfer of Technology
...development. See e.g., Santa Fe-Pomeroy, Inc. v. P&Z Co" 569 F.2d 1084 (9th Cir.1978);Sperry Products, Inc. v. AluminumCo.ofAmerica, 171 F.Supp. 901, 936-38(N.D.Ohio 1959), rev'd in part on othergrounds, 285 F.2d 911 (6th Cir.1960).Where the grant-back requirement would create barriers toen......
-
Antitrust Analysis Of Intellectual Property Agreements
...v. B & W, Inc., 251 F. Supp. 811, 820-21 (S.D. Tex. 1966), aff’d , 395 F.2d 362 (5th Cir. 1968); Sperry Prods. v. Aluminum Co. of Am., 171 F. Supp. 901, 936-38 (N.D. Ohio 1959) (“no attempt has been made to show any adverse economic consequences arising from the ‘grant backs’”), aff’d in pa......
-
Antitrust Issues Involving Intellectual Property
...v. B & W, Inc., 251 F. Supp. 811, 820-21 (S.D. Tex. 1966), aff’d , 395 F.2d 362 (5th Cir. 1968); Sperry Prods. v. Aluminum Co. of Am., 171 F. Supp. 901, 936-38 (N.D. Ohio 1959), aff’d in part & rev’d in part , 285 F.2d 911 (6th Cir.), and rev’d in part sub nom. Firestone v. Aluminum Co. of ......