Teledyne Mid-America Corp. v. INTERNATIONAL T. & T. CORP.

• Decision Date: 18 March 1971
• Docket Number: Civ. A. No. 3778.
• Citation: 325 F. Supp. 424
• Court: U.S. District Court — District of Rhode Island
• Parties: TELEDYNE MID-AMERICA CORPORATION, Plaintiff, v. INTERNATIONAL TELEPHONE & TELEGRAPH CORPORATION, Defendant.

325 F. Supp. 424

TELEDYNE MID-AMERICA CORPORATION, Plaintiff, v. INTERNATIONAL TELEPHONE & TELEGRAPH CORPORATION, Defendant.

Civ. A. No. 3778.

United States District Court, D. Rhode Island.

March 18, 1971.

Roy H. Olson, Richard Bushnell, and Richard A. Giangiorgi, of Olson, Trexler, Wolters & Bushnell, Chicago, Ill., A. Lauriston Parks, of Jordan, Hanson & Curran, Providence, R. I., for plaintiff.

Dana M. Raymond, and Robert Neuner, of Brumbaugh, Graves, Donohue & Raymond, New York City, George M. Vetter, Jr., of Hinckley, Allen, Salisbury & Parsons, Providence, R. I., for defendant.

OPINION

PETTINE, District Judge.

This is an action brought under 28 U.S.C. § 1338 by Teledyne Mid-America Corporation (hereinafter Teledyne) against International Telephone & Telegraph Corporation (hereinafter I.T.T.) alleging infringement of United States Letters Patent No. 2,867,001 (hereinafter "001 patent").

Teledyne is a corporation existing under the laws of Delaware, having been substituted for Western Insulated Wire Company, the original plaintiff in this action, in accordance with Rule 25 of the Federal Rules of Civil Procedure.

The defendant, I.T.T., is a Maryland corporation with a regular and established place of business in the District of Rhode Island, where it is claimed the defendant carried out, prior to the filing of this suit, the acts of infringement. Venue is therefore proper in accordance with 28 U.S.C. § 1400(b).

The defendant denies that it has infringed the "001 patent" and challenges its validity on three grounds: 1) lack of invention;¹ 2) vagueness, indefiniteness, and failure to point out and distinctly claim the alleged invention;² and 3) lack of novelty.³

The "001 patent" issued on January 6, 1959, to the Western Insulated Wire Company, its successors or assigns. On April 11, 1967 the instant action was filed.

The patent in suit covered a "Means and Method for Forming Indicia on the Surface of Continuous Vulcanized Products." Essentially, the patent application disclosed a device for effecting the indent imprinting of letters, numbers, symbols and other indicia into the outer sheath of electrical cable while the cable was being processed through a long continuous vulcanizing (CV) tube. The metallic conductor, or core, is first passed through an extruder, which fits a polymer material around the core. From the extruder, the now-jacketed cable enters a vulcanizing steam chamber containing a sufficient atmosphere of steam to cause vulcanization (or "curing") of the polymer sheath, which is in a plastic state before entering the chamber. The application for the "001 patent" further disclosed that very shortly after entering the chamber, and not before the moment at which the vulcanizing atmosphere commences its effect upon the surface of the sheath, the cable passes between two rollers, one of which has printing dies on its periphery, themselves heated to a vulcanizing temperature, so that with a sufficient application of pressure between the rollers, the sheath is imprinted with the desired indicia. The completely vulcanized and imprinted product emerges at the opposite end of the CV tube. Both the entrance and exit to the CV tube are tightly sealed around the cable to prevent the steam from escaping.

The relevant art here is commercial vulcanization which requires that material such as electrical cable be subjected to relatively high temperatures and pressures during which it is transformed from the soft plastic condition to a tough, relatively hard, dense and resilient condition.

The vulcanization process is a progressive one and standard curves show that upon being subjected to heat and pressure, the insulating material will initially and for a very short instant increase in softness and then the softness and plasticity of the material is progressively reduced until it reaches its final tough, resilient, and relatively hard and dense vulcanized condition. Such vulcanization commences at the surface or skin of the material and progresses toward the center of the cable.

VALIDITY

A. Novelty

1. Prior Public Use

35 U.S.C. § 102(b) provides:

"§ 102. Conditions for patentability; novelty and loss of right to patent

A person shall be entitled to a patent unless—

* * * * * *

(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States."

While admitting that it has processed indent-printed cable in a continuous vulcanizer, defendant I.T.T. has presented evidence in support of its contention that as early as March 1953 the Cornish Wire Company (hereinafter Cornish), a division of General Cable Corporation, at its plant in Williamstown, Massachusetts, made commercial use of a process which anticipated the invention claimed in the "001 patent" and which invalidates the "001 patent" because Cornish's method was in public use more than one year prior to the date of application for the "001 patent"—i.e. before December 3, 1953.

Defendant has the burden of proof of invalidity of this patent. Plaintiff contends, and defendant concedes, that the proper standard is proof beyond a reasonable doubt, citing Heyman Mfg. Co. v. Hap Corp., 196 F.Supp. 447 (D.R.I. 1961), wherein Judge Day explained the need for that exacting standard as follows:

"The situation presented is governed by the rule of law that when a person charged with infringement of a patent seeks to establish anticipation by means of oral testimony he must do so by proof that leaves no reasonable doubt as to the fact. This rule of law is clearly stated in The Barbed Wire Patent (Washburn & Moen Mfg. Co. v. Beat 'Em All Barbed-Wire Co.) 1892, 143 U.S. 275, at page 284, 12 S. Ct. 443, 447, 36 L.Ed. 154, where the Supreme Court said:

`* * * Witnesses whose memories are prodded by the eagerness of interested parties to elicit testimony favorable to themselves are not usually to be depended upon for accurate information. The very fact, which courts as well as the public have not failed to recognize, that almost every important patent, from the cotton gin of Whitney to the one under consideration, has been attacked by the testimony of witnesses who imagined they had made similar discoveries long before the patentee had claimed to have invented his device, has tended to throw a certain amount of discredit upon all that class of evidence, and to demand that it be subjected to the closest scrutiny. Indeed, the frequency with which testimony is tortured, or fabricated outright, to build up the defense of a prior use of the thing patented goes far to justify the popular impression that the inventor may be treated as the lawful prey of the infringer. The doctrine was laid down by this court in Coffin v. Ogden, 18 Wall. 120, 124 21 L.Ed. 821, that "the burden of proof rests upon him, the defendant, and every reasonable doubt should be resolved against him. * * *" This case was subsequently cited with approval in Cantrell v. Wallick, 117 U.S. 689, 696 6 S.Ct. 970, 29 L.Ed. 1017, and its principle has been repeatedly acted upon in the different circuits * * *.'"

196 F.Supp. at 453.

In the instant case defendant has presented substantial tangible evidence in addition to oral testimony. Whether that is sufficient to remove the unusually heavy burden, for a civil case, of "proof beyond a reasonable doubt" defendant has not chosen to argue. See, however, United Kingdom Optical Co. v. American Optical Co., 68 F.2d 637 (1st Cir. 1934). I do not reach that question here, for the result is the same regardless of the standard applied to defendant's evidence of prior public use.

Based upon the evidence presented, I find, with respect to the issue of prior public use:

1) Cornish, through its then Sales Manager, J. B. Baxter, applied on September 7, 1951, to a Regional Director of the United States Bureau of Mines, for safety approval of its product designated as SO Type Cord. That application stated, in relevant part:

"We would call to your attention the fact that these cables at present are not marked in accordance with your requirements. However, we are in a position to imprint directly into the rubber on the outer jacket the approval number, if granted, along with other pertinent information as to the size, type and construction of the cord."

Baxter testified that this meant that Cornish was "in the process of developing methods of indent printing the cable."

2) Safety approval was granted by the Department of Mines of the Commonwealth of Pennsylvania on January 14, 1952, based on tests of the non-imprinted cable which had been submitted by Cornish. The Approval Number P — 117 was granted for identification of this cable.

3) Cornish offered for sale, in Section V, page 4 of a trade catalog published March 1, 1953, an extensive line of coroprene (trade name for neoprene rubber) insulated portable cords, one attribute of which was that:

"They have successfully passed the flammability test of the United States Bureau of Mines as well as the Pennsylvania Bureau of Mines * * *. The symbol P-117BM, along with other data, is molded into the jacket to identify the cord as being acceptable for this special service."

4) Further strengthening the defendant's position, it was established, and I so find, that in early 1953, Mr. J. B. Baxter, the then Sales Manager of Cornish, had written the text of the trade catalog that had a general distribution of at least 5,000 copies, offering for sale SO Cords which were indent printed by a printing wheel with guide rolls installed in a continuous vulcanizer tube identified as the #6 CV line and that prior to March 1953, he had actually seen the marking wheel and guide rolls located in a steam chamber mounted on said line. Mr. Baxter further testified that Cornish only displayed in their trade catalog those items which were available for sale at that time.

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