Technograph Printed Circuits, Ltd. v. Bendix Aviation Corp.

• Decision Date: 27 May 1963
• Docket Number: Civ. A. No. 11421.
• Citation: 218 F. Supp. 1
• Parties: TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated v. BENDIX AVIATION CORPORATION.
• Court: U.S. District Court — District of Maryland

218 F. Supp. 1

TECHNOGRAPH PRINTED CIRCUITS, LTD., and Technograph Printed Electronics, Incorporated v. BENDIX AVIATION CORPORATION.

Civ. A. No. 11421.

United States District Court D. Maryland.

May 27, 1963.

John W. Avirett, 2d., Baltimore, Md., Walter J. Blenko and Walter J. Blenko, Jr., Pittsburgh, Pa., and M. Victor Leventritt, New York City, Piper & Marbury, Baltimore, Md., Blenko, Hoopes, Leonard & Buell, Pittsburgh, Pa., of counsel, for plaintiffs.

Benjamin C. Howard, Miles & Stockbridge, Baltimore, Md., Edward S. Irons, Edward F. McKie, Jr., and Harold J. Birch, Washington, D. C., and Irons, Birch, Swindler & McKie, Washington, D. C., of counsel, for defendants.

R. DORSEY WATKINS, District Judge.

This is an action for alleged infringement of three patents, all relating to the "Manufacture of Electric Circuit Components." The plaintiff Technograph Printed Circuits, Ltd., is a British corporation which by mesne assignments from the inventor, Paul Eisler, is the owner of the patents in suit. The plaintiff Technograph Printed Electronics, Inc., a North Carolina corporation, is the exclusive licensee under said patents, with right to license others. Ordinarily the two companies will be referred to as plaintiffs.

The defendant, The Bendix Corporation (formerly Bendix Aviation Corporation), is a Delaware corporation with an established place of business within the District of Maryland, and is alleged to have committed acts of infringement within this District.

Jurisdiction was adequately proved, and is admitted.

Narrative Background.

The inventor, Dr. Paul Eisler, was an Austrian subject. His earlier education was in the electrical field. His first professional activity was for a British firm working on radio equipment installed in Yugoslavian trains. Later he worked for an Austrian manufacturer of radio and other electrical communication equipment; founded and edited a paper for amateur builders of wireless sets; and set up a small laboratory for the construction of amateur wireless equipment. All this work was on the "point-to-point" wiring system, the prefabricated "components" being mounted on a supporting frame or chasis and connected by individual wires soldered, clipped or otherwise attached from point to point.

In 1936 Eisler, then twenty-nine years old, came to England to work on certain aspects of television, intending ultimately to return to Austria. The Nazi rise prevented this, and Eisler secured employment with a chain of cinema theatres, working on sound and picture projections. In 1940 he was interned but was released in 1941. His alien status made employment a problem. He claims that after Churchill's appeal for individual effort in winning the War, he decided that his greatest help could be in the field of the production of electronic equipment. He revived his interest in "printed" circuits, upon which he had first worked in 1936, at which time he had painted circuit lines with adhesive paint, and stuck gold leaf thereon.

Eisler ultimately interested the managing director of an old London firm of printing engravers, whose plant had been bombed out. Music printing was not an essential war production, and new equipment could not be obtained for that purpose. With what was available, Eisler began his experiments, at first alone, but later in 1943, with another Austrian whom Eisler had helped to escape.

Many methods were tried, using existing printing equipment and skills — including "printing" with an ink which would become conductive on drying; spraying powder and molten metal onto an adhesive ink;¹ chemical deposition with blocking out by a negative and electroplating; punching out a pattern from metal foil²; the use of fusible metal and "detinning"; and the use of prefabricated "foil"³, adhered⁴ to an insulating medium. Rolled copper, aluminum, steel and copper-nickel foils were available, but hard to obtain. The cost of rolling foil in the desired width was prohibitive, and later Eisler manufactured his own foil by the electrolytic process developed by Thomas Alva Edison. Rolled or electrolytic foil was then bonded to insulated paper or a laminate (bakelite). The bonding qualities of electrolytic foil were and are superior to those of rolled foil.

Eisler made a three "valve" (tube) printed circuit radio receiving set using a well-known circuit. The testimony is to the effect that the set worked, and was used to receive broadcasts of the Allied invasion on D-Day. It was introduced in the trial of this case as an exhibit, but was not in working condition, and apparently no effort was made to make it workable during the extended trial.

Prior to D-Day efforts were made to have the alleged printed circuit methods adapted to war production. Despite the alleged existence of the Eisler radio, and of demonstration "books" of sheets of copper clad laminate processed through successive stages of manufacture (none of said books having been located or offered in evidence), the British Government was completely non-receptive.

After VE-Day, efforts were made to interest commercial manufacturers. None of the radio manufacturers could be persuaded to change its methods of production. With the exception of strain gauges "dealt with in quantities of tens or hundreds of thousands"⁵ no commercial production was secured in England prior to about 1955.

The printed circuitry, allegedly invented by Eisler, with which the case is principally concerned, essentially consists of a "printing"⁶ step by which a circuit network is delineated on the face of a performed insulating sheet. The unwanted metal is preferably dissolved in an etchant, after which external components may be joined by insertion, manual or machine, and soldering may be effected manually, or in certain instances by dipping or flow soldering.

Eisler British Patents.

On February 2, 1943, Eisler filed his first provisional specification (1749/43). An additional provisional specification was filed on April 3, 1943. A complete British specification was filed on February 2, 1944, and a corresponding United States application, Serial No. 520,991, was filed February 3, 1944. Eisler's British Patent Agent (O'Dell) testified that the original British complete specification is identical with the specification of United States application Serial No. 520,981.⁷ The history of the English prosecutions is unusually significant in its bearing upon the validity and scope of the American patents.

The Eisler British applications were filed without any search of the prior art having been made. Eisler and his British Patent Agent were under the impression that Eisler was the inventor of the printing of electric circuits by any method (O'Dell deposition, page 63); that Eisler could "probably more or less monopolize printed circuits; not only the foil technique, but a lot of processes could be used for some particular limited usage." (Eisler deposition, page 225). The printing and etching technique was only one of the many techniques disclosed as equivalents.

In the first Office Action, of July 13, 1944, in United States Application Serial No. 520,991, the Examiner cited art disclosing manufacture of electrical circuits by some of the methods of the printing art disclosed and broadly claimed by Eisler.⁸

In November 1946 the British Examiner cited a number of pertinent references against the British complete specification. These will later be discussed. As a result, it could no longer be said "that the idea of printing electric circuits was new," and "the application fell into bits" (O'Dell, page 63); "fell apart" (O'Dell, page 81). Accordingly the complete specification (British 639,111) was amended in disclosures; certain prior art was acknowledged and expressly disclaimed; and the application was limited in claims to flexible printed circuitry produced by the etching technique. As so limited it issued ("Complete Specification Published") June 21, 1950.

A divisional application was simultaneously issued as British Patent 639,178, limited in disclosure and claims to the production of printed circuits in which ink was applied as the resist material. Reference to formation of the resist pattern by photographic means was omitted as not required to support the limited claims. Certain prior art was again expressly acknowledged and disclaimed.

A second divisional application also simultaneously issued as British Patent 639,179, limited in disclosure and claims to a method in which ink containing a readily fusible metal pigment was applied to insulation, and the metal subsequently consolidated by heat.

In connection with the prosecution and allowance of the United States patents, it is noteworthy that (a) the specifications (disclosures) were not changed (except as noted); (b) no acknowledgment of prior art, disclaimed in the British patents, was made; and (c) with one exception, and that late in the prosecution of the second ('568) patent, none of the art disclaimed in Eisler's British patents was cited. The significance of this is emphasized by the fact that British Examiners search only for anticipation and double claiming, questions of obviousness in view of the teaching of the prior art being left to the courts.

The United States Patents.

The first Eisler application for a United States Patent, Serial No. 520,991, was filed February 3, 1944. Patent No. 2,441,960 (hereafter '960) issued on May 25, 1948 and is in suit. On February 27, 1948, a divisional application 11,798 was filed, out of which Patent No. 2,257,568 issued on February 26, 1952, and was subsequently reissued on June 12, 1956 as United States Reissue 24,165 ('165) in suit. Divisional Application 11,798 was further divided by Application 261,989, filed December 17, 1951, and issued on April 15, 1955 as Patent No. 2,706,697 ('697) in suit.

Patents '960 and '697 were each granted for the normal statutory term of seventeen years; 35 U.S.C. § 154. Patent '568, however, was granted for a...