Wentworth v. GULTON INDUSTRIES, INC.

• Decision Date: 24 August 1982
• Docket Number: Civ. A. No. CA-3-80-0785-G.
• Citation: 578 F. Supp. 508
• Parties: Richard G. WENTWORTH, Vultron, Inc., and Transign, Inc., Plaintiffs, v. GULTON INDUSTRIES, INC., Defendant.
• Court: U.S. District Court — Northern District of Texas

578 F. Supp. 508

Richard G. WENTWORTH, Vultron, Inc., and Transign, Inc., Plaintiffs, v. GULTON INDUSTRIES, INC., Defendant.

Civ. A. No. CA-3-80-0785-G.

United States District Court, N.D. Texas, Dallas Division.

August 24, 1982.

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Owen E. Perry, Ernie L. Brooks, Paul J. Ethington, Reising, Ethington, Barnard, Perry & Brooks, Southfield, Mich., David W. Shuford, Richard L. Jackson, Shuford, Jackson & Allen, Dallas, Tex., for plaintiffs.

Roger C. Clapp, Richard, Harris & Medlock, Dallas, Tex., for defendant; Morris Relson, David R. Francescani, Darby & Darby, New York City, of counsel.

MEMORANDUM OPINION

PATRICK E. HIGGINBOTHAM, District Judge.

This patent infringement suit involves computer-activated electronic visual display systems for motor vehicles. On December 17, 1971, plaintiff Wentworth filed a patent application for a visual display system¹ using a special purpose digital computer to operate a flip-dot display manufactured by Ferranti-Packard Electronics, Inc., a Canadian corporation. The patent was first rejected based on prior art and then approved with amendments.

Defendant Gulton Industries, Inc. ("Gulton"), after experimenting with liquid crystal display arrangements for bus and railway use, became aware in mid-1975 of the flip-dot type of visual display marketed by Ferranti-Packard. In 1976, Gulton's Luminator division produced and installed prototypes of a bus-destination system using a microprocessor to operate the flip-dot system. In 1977, Luminator offered an improved design, called LIDS I ("LIDS") which, in slightly modified form, has been installed in bus systems in various communities.² Gulton has not applied for a patent on its display product.

By mid-1978, plaintiff Transign, Inc. ("Transign") began experimenting with electronic bus destination signs. In mid-1979, Transign's parent corporation, Trans-Industries, Inc., purchased Vultron, Inc. ("Vultron"), making it a sister company to Transign. Thereafter, plaintiff Vultron continued to develop an electronic destination sign for marketing by Transign. Transign placed its first prototypes using the Ferranti-Packard flip-dot display system in the field in early 1980 and made its first production shipment in August, 1980. Meanwhile, in January, 1980, Transign learned of the Wentworth patent and obtained a license for $10,000 covering the exclusive rights under the patent for the bus and rail fields. Wentworth retained the patent rights in other fields as well as the right to recover for any infringement occurring before February 1, 1980 in all fields. Wentworth was not aware of either the Transign or the Luminator products until after he sold the patent rights.

On March 4, 1980, Wentworth filed suit against Gulton Industries, Inc.³ Vultron/Transign were added as parties plaintiff on May 8, 1981.

Plaintiffs argue that claims 1, 6, 8 and 9 of the patent in suit have been infringed by Gulton's LIDS display system.⁴ Defendant denies that its LIDS system infringes the patent, arguing that (1) the LIDS system omits essential features of the patented system, to which the patent scope was limited to avoid prior art, and which were argued to the Patent Office as being important to patentability; (2) the LIDS system in essential respects uses substantially different structure, functioning in a substantially different way from that of the patent to achieve substantially different results; and (3) the LIDS system, in any respects similar to the patented system, utilizes only prior art teachings. Defendant further claims that the patent is invalid because (1) the patent is not novel, having been anticipated by the prior art or, in the alternative, (2) any differences from the prior art were obvious to a person of ordinary skill in the field, and the patent claims as the invention only an obvious assemblage of prior art components and features, each of which functions in the same manner as it did in the prior art, and which produces no unexpected or surprising results in combination; and finally, (3) the patent claims only an assemblage of functions and lacks adequate disclosure to enable a person of ordinary skill to produce and operate the patented system, without having to invent ways to accomplish those functions.

As the Court of Appeals of the Fifth Circuit has directed, this court considers the validity issue before the infringement issue. "Of the two questions, validity has the greater public importance." Beckman Instruments v. Chemtronics, 428 F.2d 555 (5th Cir.1970) (quoting Sinclair & Carroll Co., Inc. v. Interchemical Corp., 325 U.S. 327, 65 S.Ct. 1143, 89 L.Ed. 1644 (1945)).

A statutory presumption of validity usually attaches to patents approved by the patent office. See 35 U.S.C. § 282. The presumption arises because of (1) "The acknowledged experience and expertise of the Patent Office personnel," and (2) "recognition that patent approval is a species of administrative determination supported by evidence." Parker v. Motorola, 524 F.2d 518, 521 (5th Cir.1975), cert. denied, 425 U.S. 975, 96 S.Ct. 2175, 48 L.Ed.2d 799 (1976). Nonetheless,

when a defendant in an infringement suit attacks the validity of a patent on the ground that it was issued without consideration by or presentation to the Patent Office of pertinent prior art, the reason for the presumption dissipates and the presumption is weakened. citations omitted. In these circumstances a court must as a minimum scrutinize the patent claims in suit more closely than when the presumption is at full force.

Id. See also Cathodic Protection Service v. American Smelting, 594 F.2d 499, 505 (5th Cir.1979) (presumption "severely weakened" when prior art not cited to Patent Office).

The defendant in this case has cited pertinent prior art not presented to the Patent Office, see pages 517-525 infra, so the presumption of the validity of plaintiffs' patent is weakened and the court must scrutinize the patent in suit closely.⁵

I. The Patent in Suit

The patent in suit is U.S. Patent 3,750,138 (the '138 patent). It concerns an electronic, programmable sign display system that the patent disclosure suggests is especially adapted for police cars, buses and taxis. It is powered by a standard twelve volt vehicle battery. The vehicle operator, by setting a selector switch, can select any one of a plurality of precomposed messages that are stored within the memory of the system to be displayed on a display unit mounted on the front, rear or sides of the vehicle.

The display system disclosed in the '138 patent includes three basic components shown in Figure 1: a manual control unit 20, a decoder 30, and a display unit 40. Figures 1 and 2 of the '138 patent, with lines showing the relationship of each, are reproduced below:

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For the display means, the patent suggests using the "flip-disks" or "flip-dots" marketed by Ferranti-Packard Limited. This display system has a board for alphanumeric characters, each character displayed on a module containing seven horizontal rows of five dots each in a 5 × 7 array or matrix. Each dot has a black nonreflective side and a colored reflective side. Each also has an associated electromagnetic coil or winding assembly for causing the dot to rotate from a position exposing its reflective side to a position exposing its nonreflective side. The reflective sides of the dots form the desired letters or numerals. In the embodiment disclosed in the '138 patent, pulses are applied to the seven dots in each column, sequentially from left to right until the entire message line is displayed. Magnetism holds the dots in position until an electrical pulse is applied to cause each dot to flip to a position exposing its opposite side. An advantage of this display system is that power is needed only to change the word unit, not to keep it displayed.

As an example, the '138 patent describes a display unit row of twelve elements on which twelve characters would be displayed, one character⁶ at a time. That portion of a message which can be shown as a unit on the display board is referred to in the patent as a "word unit." Thus, in the example composed of twelve display elements, a word unit contains twelve alphanumeric characters. A message may consist of more than one word unit. In that case, it is displayed in successive lines. For example, the message CAUTION ALL TRAFFIC MERGE RIGHT would be displayed in three message lines or word units: (1) CAUTION (2) ALL TRAFFIC (3) MERGE RIGHT.

The message selector 20 and the decoder 30 control the messages displayed on the display unit described above. The selector is a multiple position switch, whose setting produces a set of signals representing the designated number of the message being selected.

The decoder includes: (1) an electronic memory bank, characterized as a preprogrammed read only memory,⁷ which stores each word unit in a separate memory location; (2) a logic and memory select circuit, with its own memory device to store the individual addresses of the various word units,⁸ which determines which of the stored word units is to be called out and which activates the memory bank location containing that word unit; and (3) a set of circuits, which causes each word unit called out of the memory bank to actuate and set the display to show the characters of the word unit. The latter set of circuits includes a character generator, a column sequencer, a character sequencer, a column input of display, and a row input of display. See Figure 2. Finally, the decoder operates with feedback signals: one, line 54, from the character generator to the memory bank, causes a new character to be displayed, and a second, line 56, from the memory bank to the memory select, causes either a new word unit or a new message to be displayed.

The organization of the memory in the patent system is called a "fixed-length record" arrangement because each word unit has a fixed number of...