Wintermute v. Hermetic Seal Corp.

• Court: U.S. District Court — District of New Jersey
• Citation: Wintermute v. Hermetic Seal Corp., 171 F.Supp. 770 (D. N.J. 1959)
• Decision Date: 23 March 1959
• Docket Number: Civ. A. No. 606-56.
• Parties: Carlton H. WINTERMUTE, Plaintiff, v. HERMETIC SEAL CORP., Defendant.

171 F. Supp. 770

Carlton H. WINTERMUTE, Plaintiff, v. HERMETIC SEAL CORP., Defendant.

Civ. A. No. 606-56.

United States District Court D. New Jersey.

March 23, 1959.

William A. Consodine, Newark, N. J., for plaintiff. Delavan Smith, M. Arthur Auslander, and Hilda Polak, New York City, of counsel.

Ravin & Ravin, by Morris M. Ravin, Newark, N. J., for defendant. Philip G. Hilbert, Washington, D. C., of counsel.

WORTENDYKE, District Judge.

This action is brought pursuant to 35 U.S.C. § 281, by the holder of United States Patent No. 2,454,244, for injunction, damages, and attorneys' fees, in accordance with §§ 283, 284 and 285 of that Title, because of defendant's alleged infringement of the patent.

The patentee's application was filed February 19, 1945, and the patent issued November 16, 1948. It covers a device described therein as "Moistureproof Housing for Piezo-electric Elements."

The action was commenced on July 30, 1956 against Hermetic Seal Manufacturing Co. and Hermetic Seal Products Co., both corporations of New Jersey. On August 8, 1956 these defendants filed a Chapter XI proceeding under the Bankruptcy Act, 11 U.S.C. § 701 et seq. and upon appointment of a receiver, this action was held in abeyance, but was later reactivated and came to issue by the filing of an answer on December 13, 1956. Following confirmation of a plan of arrangement for the original defendant corporations, all of their assets were transferred to Hermetic Seal Corporation, which was substituted as sole defendant in this action by a stipulation dated March 10, 1958.

The defendant denies the validity of the patent in suit; charges prior disclosure of the claimed invention in several earlier patents; contends that plaintiff's device lacks invention, novelty and patentability; alleges that the claims of the patent relied upon are misdescriptive and vague; and further pleads file wrapper estoppel and laches. Defendant also seeks, by way of a counterclaim, a declaratory judgment that the patent in suit is invalid and not infringed.

In addition to the prior art patents enumerated in the answer, defendant cited four additional patents in its notice of prior art filed October 1, 1958.

The device disclosed by the patent in suit is described in the specifications as "a housing for the piezo-electric element which is capable of withstanding exposure to high humidity for an indefinite length of time" and as "a mounting for the piezo-electric plate, the mounting being particularly suitable for its use in connection with the disclosed housing." The objects of the invention stated in the specifications are "to provide a moisture-proof housing for the piezo-electric elements" and "to provide a piezo-electric unit including a hermetically-sealed housing filled with an inert gas, and a mounting for the piezo-electric plate fitting into the housing." Although the patent contains fourteen claims (35 U.S.C. § 112), only claims numbered 6 and 14 are relied upon in this action.¹

The evidence and the law upon the issues of validity and infringement of the patent in suit have been briefed by the respective parties and are now before the Court for determination. The general rules of law applicable to a case of this kind are now codified in Title 35 of the United States Code. R. M. Palmer Co. v. Luden's, Inc., 3 Cir., 1956, 236 F.2d 496.

The patent in suit is presumed valid, and the burden of establishing its invalidity rests upon the defendant. 35 U.S.C. § 282; R. M. Palmer Co. v. Luden's, Inc., supra; Hartford National Bank & Trust Co. v. E. F. Drew & Co., 3 Cir., 1956, 237 F.2d 594. In order to be patentable, a device must be a "new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." 35 U.S.C. § 101. The device described in the claims of the patent here in suit would not be patentable if it (1) was known or used by others or patented or described in a printed publication before the invention thereof by the applicant; or (2) was patented or described in a printed publication more than one year prior to the date of the application; or (3) was described in a patent granted on an application filed before the claimed invention; or (4) was invented by another prior to its invention by the applicant. 35 U.S.C. § 102. The same statutory section further provides that "in determining priority of invention there shall be considered not only the respective dates of conception and reduction to practice of the invention, but also the reasonable diligence of one who was first to conceive and last to reduce to practice, from a time prior to conception by the other." Even if a claimed invention does not fall within any of the excluded categories set forth in § 102, it may still be unpatentable "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." 35 U.S.C. § 103. See Stanley Works v. Rockwell Mfg. Co., 3 Cir., 1953, 203 F.2d 846, certiorari denied 1953, 346 U.S. 818, 74 S.Ct. 30, 98 L.Ed. 345.

Although the patent in suit relates to and teaches a method of housing for facilitating the performance of a piezoelectric element, the use and characteristics of quartz crystals in the field of radio communications, for the assurance of uniformity in the frequencies of radio carrier waves, were well known prior to plaintiff's conception of his device. "`Piezo-Electric' * * * is a quality possessed by certain crystalline substances such as quartz. A piezo-electrical crystal when compressed develops an electric charge on certain of its surfaces, and conversely, when charged by an electric current, the crystal is compressed and expanded. * * * Each radio transmitting station is assigned a definite transmitting frequency. To avoid interference, it is essential to maintain that frequency constant. * * * To enable the receiver to select between transmitting stations, it is essential that the stations transmit at different frequencies or rather at the particular frequency assigned to them. * * * While the vacuum tube transmitter materially improved the stability of frequency as compared with the early forms of transmitting apparatus, the increasing use of wireless and the multiplication of transmitting stations required stability of frequency in order that sending stations would not interfere with each other. This demand for stable oscillations finally led to the adoption of piezo-electric crystals to control the frequency of the oscillations of the vacuum tube transmitter." Nields, D. J., in Miller v. National Broadcasting Co., Inc., D.C.Del. 1934, 6 F.Supp. 47, affirmed 3 Cir., 1934, 79 F.2d 657. Judge Nields further informs us in the Miller case, supra, that Professor Cady of Wesleyan University began experiments with piezo-electric crystals as early as 1917, and in 1922 published a paper entitled "The Piezo-Electric Resonator." In this paper he disclosed to the art that a crystal was suitable to control the frequency of a vacuum tube oscillator. In 1923 a patent was issued to him for two crystal controlled oscillators in which the frequency of oscillation was controlled by the natural frequency of the crystal. Indeed, the specifications of the patent here in suit expressly recognize the pre-existence of general public knowledge of piezo-electricity and the employment of the electrical characteristics of quartz crystals for carrier wave frequency stabilization. We also learn from these specifications that "the requirements imposed upon the piezo-electric elements, from the point of view of their frequency stability and constancy of their activity, have been increasing at a very rapid rate, and they (have) now reached such a level that even the presence of an insignificant amount of humidity in the housings surrounding and supporting the crystal (has been) found to be detrimental to the maintenance of constant frequency and activity by the piezo-electric elements." Wintermute further informs us that, despite the evolution of a process by V. E. Bottom for eliminating the aging phenomenon of quartz crystals, their vulnerability to one of the effects of water vapor still remained. "If the moisture present in the air surrounding the piezo-electric plate is allowed to condense on the surfaces of the plate, it acts as a damping means, decreasing the activity of the plate and broadening its frequency response, thus destroying in large measure its usefulness as a frequency control element." Plaintiff's claimed invention, therefore, is merely "a moisture-proof, hermetically-sealed housing" for a piezo-electric element and its mountings.

Wintermute claims that his invention is an improvement over piezo-electric crystal housings previously known to the art because of its capacity "of withstanding exposure to high humidity for an indefinite length of time" by preventing intrusion of water vapor from the atmosphere into the chamber in which the crystal is housed. In essence, therefore, plaintiff's device is an hermetically-sealed housing for an electrical element which will prevent the intrusion of the atmosphere into its interior, but still permit a current flow through the housed device without short-circuiting through the metal of the housing components. In the language of his expert witness, Adams, plaintiff's device is "an assembly of a quartz piezo-electric element that is housed in a metal container that has its electrical contacts carried through this metal container by means of glass insulation, or insulating materials similar to that."

The practice of housing a piezo-electric device in a container to shield it from the effects of varying environmental conditions was also well known to the prior art. Some of such housings were composed of ceramics, others of bakelite or plastics, and others of...