U.S. Philips Corp. v. National Micronetics Inc.
| Decision Date | 12 January 1977 |
| Docket Number | D,No. 209,209 |
| Citation | 550 F.2d 716 |
| Parties | U. S. PHILIPS CORP., Plaintiff-Appellee, v. NATIONAL MICRONETICS INC. et al., Defendants-Appellants, v. NORTH AMERICAN PHILIPS CORPORATION and N. V. Philips Gloeilampenfabrieken, Counter-Defendants. ocket 76-7134. |
| Court | U.S. Court of Appeals — Second Circuit |
John M. Calimafde, New York City (Stephen B. Judlowe, Hopgood, Calimafde, Kalil, Blaustein & Lieberman, New York City, of counsel), for defendants-appellants.
Morris Relson, New York City (Martin G. Raskin, Darby & Darby, P.C., New York City, of counsel), for plaintiff-appellee.
Before MANSFIELD, VAN GRAAFEILAND and MESKILL, Circuit Judges.
National Micronetics, Inc. ("National") appeals that portion of a judgment of the District Court for the Southern District of New York, Robert J. Ward, Judge, holding valid certain claims of U.S. Patent No. 3,246,383 ("the Peloschek Patent"). Appellant does not challenge the district court's additional finding that it infringed the patent.
The plaintiff, U.S. Philips Corporation, commenced this action against National on March 2, 1971, seeking damages and injunctive relief as assignee of three allegedly infringed patents. National denied infringement, challenged the validity of all three patents, and asserted counterclaims for patent misuse and antitrust violations against plaintiff and its assignors, North American Philips and N.V. Philips Gloeilampenfabriken. Prior to trial plaintiff withdrew one infringement claim and Judge Ward severed and stayed the counterclaims pending the outcome of the infringement action.
On January 27, 1976, after a trial without a jury, the district court issued a 50-page opinion finding one of the patents invalid and that claims 1-4, 6 and 8-11 of the Peloschek patent were valid and infringed. National's appeal is limited to the issue of the validity of the Peloschek patent under 35 U.S.C. § 103, which states that:
"A patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."
The Peloschek patent's subject matter is a process for the manufacture of a magnetic recording head, which is that part of a tape recorder or computer that translates electrical impulses into magnetic patterns on a tape for the purposes of storage. In reverse, the recording head can "read" the magnetic patterns from the tape, meaning that it retranslates them into electrical impulses which then become sounds, pictures, or a computer printout.
A magnetic recording head consists of two basic parts, the first constructed of magnetic material and the second of a non-magnetic material bonded to the first as a "gap" which permits the electrical impulses flowing through the recording head to create magnetized patterns on the tape opposite the gap. The magnetic heads at issue in this case generally have a magnetic portion constructed of two ferrite pieces, bonded together by a non-magnetic portion, usually of a glass-type material. (See Exhibit A hereto). The process for which the Peloschek patent was obtained describes a method of bonding the two ferrite pieces and the gap material to create a single-piece magnetic head with a minute non-magnetic gap.
The recording head and the gap in it must be of near-microscopic dimensions in order to maximize the amount of information which can be stored on a given portion of tape. The gap, which determines the size of the magnetized spot on the tape, generally measures no more than 50 to 100 microinches or millionths of an inch. (An average sheet of paper is about 3,000 microinches thick.) The evidence shows that for a given recording head to be able accurately to read or retranslate information which has originally been stored on a tape through use of a different recording head, the gap dimensions in each head must be virtually identical, with allowable deviations or tolerances of no more than 10 to 20 millionths of an inch for the larger heads, and much less in smaller recording heads.
Since numerous recording heads are used in a single computer disc file, it is of vital importance to have all heads conform to prescribed gap dimensions within a few millionths of an inch. Otherwise some of the essential recording heads will not function as the system requires.
For nearly a decade prior to the issuance of the Peloschek patent the recorder-manufacturing industry was concerned over the inability to produce glass-bonded heads which would uniformly meet the precise specifications and conform to the narrow tolerances that were essential to successful performance and interchangeability. The Peloschek patent addresses itself to this problem. Filed May 3, 1963, and issued April 19, 1966, the patent states its objective as follows:
(Emphasis added).
The claims which were sustained by the district court are:
Claims 6 and 8 describe the use of the process in making a multiple of recording heads, and claims 10-11 omit the use of spacing members in the process.
The claimed manufacturing process for the bonding of the magnetic and nonmagnetic portions of the recording heads may be summarized as: (1) presetting the gap or space between two ferrite pieces at a desired length by placing the surfaces of the ferrite pieces opposite each other, inserting spacing members or shims of precise given dimensions between them, and bringing the ferrite surfaces firmly together against the spacers or shims, which serve to fix the gap length at a predetermined distance; (2) placing the nonmagnetic material (e. g., glass) adjacent to the space between the ferrite pieces; (3) heating the assembly to the melting point of the nonmagnetic material (glass); and (4) permitting the melted nonmagnetic material (glass) to flow into and fill up the gap, with the result that the two ferrite pieces are bonded together by nonmagnetic material of a predetermined thickness. The flowing action is created by capillarity, a principle of physics which is defined by Webster's New Collegiate Dictionary The district court, in a well-reasoned decision, held that the subject matter of the Peloschek patent would not have been obvious to one skilled in the art of glass bonding at the time it was made, observing
(7th ed.) as "The action by which the surface of a liquid where it is in contact with a solid is elevated or depressed depending on the relative attraction of the molecules of the liquid for each other and for those of the solid."
The district court refused to accord weight to National's showing that capillary action had been disclosed in patents in the electronics and recording industry. "The prior art indicates the widespread use of capillary action to fill minute gaps, but in none is the precise size of the gap of great importance or predetermined."
Appellant claims that the capillary process was "obvious" under 28 U.S.C. § 103 and that the district court erred in inferring from the evidence that the Peloschek patent claimed a level of gap precision and uniformity greater than that found in the prior art. We disagree, and affirm the district court's finding of validity.
To resolve the issue whether the invention was obvious within the meaning of 35 U.S.C. § 103, we must examine the scope and content of the prior art, the differences between the prior art and the claims at issue, and the level of ordinary skill in the pertinent art. Graham v. John Deere Co.,383 U.S. 1, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). 1 In doing so, we recognize...
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