General Radio Co. v. Allen B. Du Mont Laboratories, Inc.
129 F.2d 608
3rd Cir.
1942
Check Treatment

*1 side that she was on her own chan- tes- nel. This is a channel. Zelno narrow tified in width it was 550 feet Consequently chart him. corroborates comply approaching vessels were bound to rule. 33 channel U.S.C.A. narrow testimony 210. Zelno’s warranted

§ finding tug trial did so court Accordingly the tanker did not. properly at fault. Zelno’s tanker was held testimony navigational does not show part tug. faults As in Clara, 200, 202, applies, Quod apparet est. maxim non non

Decree affirmed. ALLEN B. DU

GENERAL RADIO CO. v. LABORATORIES, MONT Inc. 7749. Appeals, Court Third Circuit.

Argued Oct. 1941. 1942.

Decided

Rehearing June Denied Rehearing of Petition

Reconsideration

Denied June *2 defend- infringed the defendant. The ant contends anticipation by suit invalid because of prior art or want of invention over the and that un- it is because of also delay in making reasonable improperly the reissue and because it was

granted under the reissue statute. relates of improvement cathode-ray oscillo- graphs. The invention and its fully opinion art are of described court, F.Supp. 495, district description repeated detailed need not be say here. It is that'a cathode- sufficient oscillograph ray an instrument which eye employed make visible to the human study for examination and character- periodic quantities. A istics of electrical cathode, is used a tube in which are located anode, pairs plates of deflection ar- ranged right angles on axes at each othér and a fluorescent screen. When the cathode is an electrical current activated it ejects a stream of electrons. ofMost ray them strike the anode but a slender of passes through electrons a small hole the anode and strikes fluorescent screen point making the other of the tube a at end light thereon. This stream of electrons repelled negative charge a and at- charge. Consequently positive tracted applied pairs if a to one of the plates cathode-ray will be deflection positive plate will deflected toward accordingly strike the fluorescent screen at point away point from impact. periodic oscillograph In operating the quantity to intro- examined is pair duced across the deflection one plates. ordinary practice In the vertical Darby, Jr., Samuel E. of New York pair purpose. is used for this As this (Herbert City LeRoy Cohen, Wilming- periodic goes electrical changes Del., Crews, ton, Floyd H. of New point light will be deflected City, appellant. brief),

York on the up and down on the fluorescent screen. If Adams, City R. Morton of New York ray pair is affected Davis, (Pennie, Marvin & Edmonds and and point plates light will deflection Guild, City, Baldwin all New York up and down a vertical line move Berl, Del., Wilmington, E. Ennalls order, therefore, the screen. across appellee. brief), for produce wave-shaped to be curve MARIS, JONES, Before and GOOD- necessary give studied it seen and RICH, Judges. Circuit point steady move- horizontal ment also. It must move at uniform Judge. speed from one side of the screen to the instantaneously appealed judg- then return and The defendant has from a other and repeat District the movement. is called the ment of the District Court for the “sweep produced by Delaware movement” it is 20,945 voltage applied valid as certain to the horizontal set of claims and synchro- re- when the close to plates. two circuits are order deflection nization, locking is neces- circuit in quired be obtained it oscillator result charged by synchronization frequen- sary plates what absolute that these voltage, periodic quantity being i. examined. as a sawtooth cy described e., steadily di- in one one which increases this in Bedell’s *3 instantly drops to zero. rection and then In the patent vention, 1,707,594, April issued Bedell by oscillograph in the 2, 1929, assigned plaintiff and was accomplished this result 11, 1937, 1934. On Februaipr oscillator, which are features basic was informed its counsel that current, battery, a as a a source of condenser, such certain of the of the were claims discharge tube resistances probably they invalid because were func like a switch. With which acts somewhat 18, 1937, August application tional. On applied like an voltage low the tube acts for the reissue in suit was filed. switch, open pass, but e. current can i. The reissue was issued on December voltage across the horizontal when the application 1938. With the reissue charging plates deflection rises Bedell filed an oath in which he conceded point, definite of the condenser to some 2, 3, 4, that claims original and of the by adjustment, which be determined were in such might terms that switch suddenly the tube acts like a closed merely be construed to cover the func By freely. pass and allows current means of the oscillator a duced which is deflection to apparatus. instead of the It is suffi pro- voltage is purposes cient for the sider claim of this case to con applied n the horizontal to typical since it of all plates. a result the cathode- As six. It is as follows: ray steadily deflected in a horizontal described, “In a type device of the instantaneously re- direction and then tube, cathode-ray deflecting two sets operation position. This turned its first position respect elements fixed in said with By repeated rapidity. with is means extreme respect tube with to each other adjustments cir- in the oscillator deflecting the cathode beam periodically, and means for indicating the curve formed frequency the oscillator can cuit the extremely range. varied over an wide beam stationary.” the deflected oscillograph it is ob- operating cathode-ray tube and the two sets point light should make vious that of deflecting plates admittedly old. extremely rapid across movement lay solely Bedell’s invention he what be visible to the the screen it would not described in the claim as in- “means for eye. make a line of human light order to dicating the curve formed the deflected constantly point moving must stationary.” beam as It will be seen that retracing path across the screen. Bedell function claimed his inven- It is likewise that in order to make obvious problem tion or the which it solved rather sharp point line the must continue the means which he solved the exactly path to follow the same problem. That the claims are functional is successive movements across the screen. quite clear. This was in effect conceded happen only frequency when the can plaintiff, since, seen, as we have exactly the oscillator same as that and affidavit which periodic quantity electrical which is relied for reissue contained averments being observed or bears when it a ratio by Bedell that certain of the claims of his By two more whole numbers or thereto. be construed to cover adjustment possible careful manual it is apparatus. the function instead of the frequencies very nearly to make the two is well settled that claima which func- for the same. But best results in the is invalid.1 tional problems study many synchro- absolute frequencies Congress nism is desirable. The has authorized step. inoperative must lock in It is to amended form of an or invalid the solution of problem patent patent upon that Bedell’s certain conditions. One of this sought is directed. His discloses that these is the error be cor- if a from the the reissue to inad- small rected was due vertence, examination is into the accident or mistake and was made introduced effect, fraudulent or in- oscillator circuit have will Appliance Corp., Fur Perkins Wabash Holland Co. v. Glue U. 245, 256-258, 899, 82 L.Ed. S. Electric Gen. Co. v. by patent itself, dis- implemented specification which tention.2 This section is Office, U.S. as- (d) clearly Rule 87 Patent closed and in detail the various ap- pects Appendix, requires C.A. which invention and embodiments Bedell’s plicants petitions for reissue file their There thereof. the metes and bounds “Particularly specify- on oath anything statement in this suggestion case no overlooked, ing the which it is claimed con- prior errors or having art accident, mis- stitute the specification or in- defective upon, arose or sufficient, take relied and how were drawn claims accompanied occurred.” In the oath cover an present for reissue specification the ori- not entitled. The case Bedell averred: clearly ginal patent Bedell’s con- discloses cept employed and the to solve means he “Deponent explained his invention *4 problem. passes his It that Bedell’s belief patent placed upon them full solicitors and patent solicitors did understand the not specification reliance to and file a draw invention which well in described so fully and claims which and ade- should specification. It is much more rational same, quately protect the while not claim- conclude, do, as we that drew the right ing applicant more he had a than functional claims with the intention of to claim as new. any covering all and means however, “Deponent, is now informed prob- be devised in to solve the future patent and believes that said solicitors lem which Bedell’s means failed to understand the true nature of permit solved.3 Since the law not does applicant’s recognize the invention and to of a functional claim this thereof, aspects various and embodiments solicitors, action Bedell’s it can be if thereof, metes and and that and the bounds error, clearly considered an more solicitors, inadvertence, through acci- said judgment. error But an error any or mistake and fraudu- dent without judgment, though by even made intention, lent or included in said himself, by patentee solicitor and not 1, 2, 3, 4, 5, application claims of said and 6 binding upon may patentee not be original patent which are in such terms by patent.4 rectified a reissue they may merely be construed to cover We are not be understood as apparatus, the function instead of the may patent that in no case a thereof, whereby appli- obtained allowance granted be where the error makes appears cant to claim more than he had a inoperative patent or * * new; claim right to as is the insertion of a It functional claim. It will be simply seen that this was may be that such claim be a could inserted inadvertence, an averment of accident or statutory inadvertence sense. statute, language mistake in the presented Thus if the had evi any specification supporting cir dence that the functional claims were belied Furthermore it is cumstances. inserted in other claims uninten- any wholly 2 reissue, page or “Whenever functional claim said at inoperative invalid, by partly applicant or reason 10 of 25 F.2d: “If delib- specification, erately skillfully of a defective or insufficient drafted his claims patentee claiming any any or reason of the as so as to cover means which discovery may producing or more than own invention ever his discover the re- right sult, new, as if a claim he had could it said be that his action was by inadvertence, arisen acci error has or accidental? inadvertent or Accidental any mistake, dent, predicated and without fraud action inadvertent cannot be deceptive intention, properly com ulent or conduct characterized as shall, designed.” on the surrender of such missioner deliberate or duty payment 4 Lees, 1890, and the re 258, Dobson v. 137 U.S. by law, quired 652; 71, cause 11 S.Ct. 34 L.Ed. Arnheim v. invention, Finster, C.C.N.Y.1885, 276; and in same accordance 24 F. Grand specification, Rapids to be reissued Baker, the corrected Cir., Show Case Co. ** § R.S. 4916, 1914, 341; Murray, § U.S.C.A. 216 F. re Cust. Pat.App., 1935, 77 F.2d Cf. Per Disappearing Murphy H. In Heidbrink v. Charles Hardes fection Bed Co. v. Cir., 1928, 8, Cir., Co., Co., 25 F.2d sen cer Wall Bed 266 F. denied, denied, tiorari certiorari U.S. 41 S. speak 548, Judge Evans, 65 L.Ed. 458. Ct. attempt ing to cure of an the error of a called, take, error, it if such tionally through an inadvertent apparent upon the was the face of clerk Bedell’s or their solicitors long very day It issued. the from the found that commissioner could have ex- must be inadvertence, diligence been settled that due accident error was due to in a mistake discovering such conten- ercised in or mistake.5 But we find no delay mak- the and an unreasonable tion made here nor do the contents invalidates wrapper ing facts file disclose that such Brass patent. Miller v. We the reissue presented commissioner. to the L.Ed. 783. wishes applicant are satisfied who page 351 at court said statute that case the obtain the benefits of the reissue grave is another the cir- 104 “But specific showing must make U.S.: there validity the reissued objection cumstances from which the conclusion on manifest or mistake case. accident this compared when that he the face of the drawn commissioner suggestion comply original, a mere that the not with the statute does specifica- statutory and mistake sworn couched in inadvertence averment pretence; or not was a mere showing terms or so obvious judg- pretence, an error mistake was committed solicitors instantly opening ment. to be discernible letters-patent, right to have and the *5 upon in relied Whether the error by un- and lost corrected was abandoned was support application for reissue of an sug- delay. The mistake reasonable inadvertence, mistake due to accident or is, broad gested the claim not as that was question of fact for deter of course mistake, it if it have been. as By grant by mination the commissioner.6 mistake, apparent upon the first was a was ing patent the commissioner the reissue and, any cor- inspection of the if found the facts in must be deemed to have desired, been should have rection was it However, applicant. where favor of the immediately.” applied for evidence, it entire absence of there is an original patent in our case issued The and cor duty court review the the to 2, April have 1929. At that time it should in may be that possibly error.7 rect the oral apparent patentee the and his so- to interviews, reported not in which are as to claims so broad licitors that the were therefore not in wrapper file and are the prob- us, because described the the record before the commissioner lem by rather the than means invented did receive evidence which was sufficient patentee Again, the solving for it. when support finding. to his While there is not plaintiff acquired the so, the suggestion in the record that this was 29, purchase 1934, on the func- nevertheless the record does not exclude tional nature claims was obvious possibility. all who took the trouble read them and But assuming even that the com invalidity patent should, of the there- patents missioner had before him facts fore, anyone have been with even a clear wrapper8 in the file not rudimentary knowledge law. justified finding in would have sertion of the functional that the Plaintiff was advised its counsel of the was not claims invalidity 11, February of the on inadvertence, but was due to deliberate accident or grant 1937, was but it not until six months later mistake, clear that the year, August of that that it 18th filed patent upon applica an reissue The its for reissue. years eight made more than after the 13, granted in suit December improper. original issued was Whether 1938. claims were functional drawn deliber attempt gain signifi and with the shrewd We conclude ately upon plain more than his cant patentee for the invention date not that which the patent’s judg or because of error of tiff was informed justified, counsel of part invalidity April 2, 1929, on the of the solicitors but rather ment when obviously accident or mis- its invalid claims 7 Moneyweight Signal 5 Scale Co. v. Toledo v. Louis Union Switch Co. Computing Cir., 1913, Frog, Co., Cir., 1934, etc., F.2d Scale 7 187 ville 73 6 F. 826. Harwood, Sludge, Cir., Mahn Fehr v. v. Activated 28 L.Ed. S.Ct. F.2d 948. Judge. whether question therefore-is issued. The years in delay eight more than petition re- plaintiff The filed a has for reasonable. reissue was for urges, hearing. support petition can there varying circumstances Because of 6 of that we erred claims time to the fixed rule as be no argu- of course invalid. Its application for claims within which an these combination ment is were time lim- a reasonable “means” made. What use the word must be and that the long be determined is to the circumstances ited a statement function proper under Topliff, Topliff method of recognized as the the court. been stating We combination claim. of a element delay of more that a have no doubt plaintiff upon itself the horns finds circumstances of eight years under question the claims a dilemma. If but With was unreasonable.9 this case invalid, were ruling our question exceptions the few cases hand must fail. On the other applicant which the seeks are cases in. original pat- there valid claims. But is clear broaden his justified its reis- ent which reissue and the prompt action requiring reason for sue was invalid for that reason. great in a where just as case question That claims in were invalid his claims to 'narrow seeks plain- seems even clear them. In the1 where he seeks to broaden argument. tiff’s The novel feature public misled the latter case he have combination, between the connection portion into the the unclaimed belief circuits, described in terms is not public of the invention dedicated function, as, example, means un- In the case use. former introducing small from the monopoly de- warranted claim of he has into under examination use prived public the unrestricted circuit, the oscillator but rather in terms effect, of that which he has claimed. problem the whole *6 plaintiff, assignee, what Bedell .and solved, is, indicating as “means tres- did in this case was to maintain a “no curve formed the deflected beam as sta- upon passing” eight years property sign for tionary.” There is an obvious difference public theirs. The has an which was not describing between a well in known element interest in that such a situation seeing a combination in terms of its promptly.10 privilege of The corrected well known describing function and sin- acknowledged correcting an gle element in terms of combination public original patent may in interest the result achieved the whole combina- validly upon patentee pro- conditioned It was tion. doubtless this distinction promptly. ceeding had in mind when pro- surrendered pat We conclude that reissue cured Bedell make reis- improperly granted ent was and that upon ground sue claims 1 to holding it in in not district court erred right claimed more than he had claim ground. This valid on that conclusion new. whether, unnecessary makes it to consider validity But even of the claims of in anticipated original should conced- prior art. vention over plaintiff’s must fail ed the suit likewise since judgment The of the district court upon original brought it is not reversed. surrendered, which has been but issued Rehearing. Petition for On lawfully is- it. The latter could have been the statute if the sued BIGGS, JONES, and Before erroneously had claimed more he GOODRICH, had Judges. Meyberg, C.C.Cal., 1899, delays Pelzer v. which the As illustrative illuminating Supreme discussion For an unrea F. 969. Court has ruled to be of lach of the doctrine cases of tlie a matter of law see the sonable as sought Topliff, Topliff narrow the when what is to es cited v. original opin 167-170, see the claim of the L.Ed. 658. Packages Judge Coe, See, also, Hincks Better v. ion of Condenser Co. Radio Derby Sealers, D.C.Conn.1941, App.D.C. F. 75 F.2d Supp. Pat.App., 1939, Seabury, In re Cust. 108 F.2d 232. 61á had if the error right to claim as new and by inadvertence, or mistake arisen and accident in- fraudulent obvious, already been as has tention. It is suggested, if the claims of the in that no error were valid there was in- provide a basis which would Consequently if voking the reissue statute. sound plaintiff’s present contention beyond wholly void as power grant. Commissioner petition rehearing denied. CO., INC.,

FORD v. C. WILSON & et al. E.

No. 49. Appeals, Second Circuit.

Circuit Court

July