The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
Plaintiffs are seeking relief by injunction and money damages for the alleged infringement by the defendant of patent No. 1,891,207, issued to Samuel Ruben, assignor by mesne assignments to Ruben Condenser Company, for electrolytic condenser, dated December 13, 1932, on an application filed June 19, 1930.
The plaintiff Ruben Condenser Company is the owner of said patent, and the plaintiff P.R. Mallory & Co., Incorporated, is the exclusive licensee under said patent.
The plaintiff Ruben Condenser Company is the owner of other patents of Samuel Ruben, relating to dry electrolytic condensers, and the plaintiff P.R. Mallory & Co., Incorporated, is the exclusive licensee under such Ruben patents.
For convenience I will hereinafter refer to the Ruben Condenser Company as the Ruben Company, and to P.R. Mallory & Co., Incorporated, as the Mallory Company.
The Mallory Company manufactures and sells dry electrolytic condensers under the Ruben patents, and has issued sublicenses to others to manufacture and sell dry electrolytic condensers under said patents.
The defendant, Aerovox Corporation, manufactures dry electrolytic condensers under the two Ruben patents, Nos. 1,710,073 and 1,714,191, being licensed by the Mallory Company, but has no license rights under the Ruben patent, No. 1,891,207.
Plaintiffs' suit is based on claims 1, 5, 7, 9, 13, 16, 19, and 22 of the Ruben patent, No. 1,891,207, in suit, and specimens of the alleged infringing electrolytic condensers manufactured and sold by defendant are in evidence as Exhibits 4, 5, and 6.
By amendment to the bill of complaint, the plaintiffs also charge the defendant with unfair competition.
The defendant is the owner of the two following described patents: Patent No. 1,789,949, issued to Alexander Georgiev, assignor to Aerovox Wireless Corporation, for electrolytic cell, dated January 20, 1931, on an application filed October 18, 1930; and Patent No. 1,815,768, issued to Alexander Georgiev, assignor to Aerovox Wireless Corporation, for electrolyte, dated July 21, 1931, on an application filed December 9, 1930.
To the bill of complaint and the amendment to the bill of complaint, the defendant interposed by answer the defenses of invalidity and noninfringement, and denied unfair competition, and in addition set up a counterclaim against the plaintiff Mallory Company for the alleged infringement of claims 11, 18, and 19 of said Georgiev patent No. 1,789,949 (specimens of the alleged infringing dry electrolytic condensers manufactured and sold by plaintiffs are in evidence as Plaintiffs' Exhibits 8 and 10 and Defendant's Exhibits P-2, Q-2) and for the alleged infringement of claims 1, 2, 3, 4, 8, 10, 11, 12, and 13 of the said Georgiev patent No. 1,815,768 (specimens of the alleged infringing dry electrolytic condensers manufactured and sold by plaintiffs are in evidence as Plaintiffs' Exhibits 7 to 14, both inclusive, and Defendant's Exhibits P-2 and Q-2).
The defendant also pleaded in its counterclaim a cause of action for alleged unfair competition.
The plaintiffs by their reply denied validity and infringement of the said Georgiev patents, asserted a right of immunity from suit, and denied unfair competition.
The defendant offered no evidence on the trial in support of its charge of unfair competition.
All of the three patents involved in this suit relate to electrical condensers of the type known as "dry electrolytic condensers."
An electrical condenser is a device for storing a charge of electricity, consisting essentially of two conducting electrodes separated by an insulating dielectric.
In the modern types the electrodes are metallic plates or foils, and the dielectric is a sheet of mica or paper. The capacity of such condensers, that is, the amount of electrical energy which they are capable of storing, varies inversely as the thickness of the dielectric, and, as glass, mica, and paper have very tangible thickness, the capacity which can be obtained per unit area of electrode when they are used is small in comparison with the capacity of a condenser in which the dielectric has only an immeasurable thickness, such as one in which use is made of the property of certain metals, aluminum being the common commercial example, for forming a dielectric film on the surface, which is of exceedingly minute thickness, probably not much thicker than a molecule.
The so-called "wet electrolytic condensers" were the first type to go into commercial use, and in them an aluminum electrode, coated with a thin dielectric film, is immersed in a liquid electrolyte solution, which serves the function of the complementary electrode of the condenser by conducting the electric current up to the dielectric film. In 1928 and 1929, wet electrolytic condensers on the market were made to stand about 425 volts. Work was being done in Georgiev's laboratory on wet condensers in 1929, and wet condensers sold by other concerns at that time were rated at 450 volts. Sprague's wet electrolytic condensers were rated at 400 volts around the end of 1929.
Patent No. 1,714,191, issued to Samuel Ruben, for electrical condenser, dated May 21, 1929, on an application filed December 22, 1926, discloses a dry electrolytic condenser composed of two strips of aluminum foil, one of which has a dielectric film formed on it, the two foils being separated by a gauze spacer which contains a viscous electrolytic composition of glycerin, sodium bicarbonate, and boric acid.
Patent No. 1,710,073, issued to Samuel Ruben, for electrical condenser, dated April 23, 1929, on an application filed March 21, 1927, discloses a similar construction with a viscous electrolyte composition of glycerin, borax (sodium borate), and boric acid.
Suit was brought against the present defendant in this court, on June 3, 1931, for infringement of these two patents, and on February 25, 1932, defendant settled the case and took a license under them, and has since paid royalty on all dry electrolytic condensers manufactured by it. As a part of that settlement the defendant was given an option for a license, at an additional royalty, on what eventuated into Ruben patent, No. 1,891,207, but it elected not to exercise such option for a license.
The Ruben patent, No. 1,891,207 disclosed the making of a dry electrolytic condenser with an electrolyte comprising ethylene glycol, ammonium borate, and boric acid, compounded in such a way that the finished electrolyte contains crystals suspended in a viscous liquid.
The superiority of such condensers had been determined by Ruben, and he filed his application for the patent in suit prior to any activity by the defendant or Georgiev with respect to such an electrolyte.
Defendant's chief attack on the Ruben invention appears to be based on the alleged commercial priority of the defendant's electrolyte, but that is not a determining factor, as under our laws (Rev. St. § 4886, title 35, § 31, U.S.C. [35 USCA § 31]) priority of invention is controlling unless the first inventor abandons his invention.Ruben was the prior inventor of the invention of the patent in suit and did not abandon it.
Priority in marketing a so-called 500-volt dry electrolytic condenser does not furnish the criterion by which to determine the validity of all of the claims of the Georgiev and the Ruben patents here involved, as not one of the claims of any of those patents says anyting about a 500-volt condenser.
In fact, it seems doubtful to me that the defendant in 1930 or 1931 made better than a 400-volt operating 500 peak voltage condenser.
The patent in suit, which is the result of the work of Samuel Ruben, carries forward the work represented in and is an improvement of his patents Nos. 1,710,073 and 1,714,191.
That it was the work of Ruben is shown by the following facts in evidence:
The work of Lowenstein under Ruben's instruction as far back as October, 1928, when Georgiev was working on 6 and 12 volt condensers at Aerovox, and there is no evidence to show that Georgiev then knew anything about the desirability of boiling an electrolyte.
The delivery by Ruben, under date of March 29, 1929, to "Doc" Shoemaker of rather complete specifications for 100-volt condensers.
The notes of Lowenstein, of May 18, 1929, regarding an electrolyte for high voltage condensers.
The reproduction of this electrolyte in 1933, by Knowles.
The sending by Ruben in August, 1929, to Grigsby-Grunow Company, of specifications for production of high-voltage dry electrolytic condensers.
That Georgiev had made no approach to any such voltage at that time.
The comparisons made by Raines in May, 1930, under instructions given by Ruben, of condensers with glycerin and ethylene glycol electrolytes which showed the superiority of condensers made with ethylene glycol electrolytes over those made with glycerin electrolytes, the sending by Ruben of his specifications to the Mallory Company and to the Grigsby-Grunow Company, the history of the subsequent work at the Mallory Company and the Grigsby-Grunow Company, which shows that when they followed Ruben's instructions the results were excellent, and that, when they could not or would not, they ran into trouble.
Ruben did not testify that his electrolyte becomes chilled at 85 degrees C.
Dr. Frankel gave that figure, but did not use the word "chilled."
Dr. Frankel says that he did not obtain a clear solution called for by the patent, but this was evidently because he failed to follow its instructions correctly, as Raines described the process.
That the invention of the patent in suit was the work of Ruben is not, in my opinion, shaken by the testimony of Garstang, a former employee of the Mallory Company, and a novice in the art of dry electrolytic condensers, that he did not succeed in making a good condenser before January 1, 1931.
A patent is addressed to those skilled in the art. The determination of the proper degree of heat to be used is fairly within that skill. American Stainless Steel Co. v. Ludlum Steel Co. (C.C.A.) 290 F. 103, 108.
I am convinced that, if he had followed instructions, he would have succeeded generally, and he himself admits that he made a Ruben condenser which stood 500 volts, on September 10, 1930. Assuming that Garstang is correct in disclaiming responsibility for the flyleaf, the fact remains that he credits himself with writing, on the day before Christmas, 1930, the text of a booklet on Elkon condensers, in which he claimed 575 volts for the Ruben condensers.
An ethylene glycol electrolyte is superior to a glycerin electrolyte in dry electrolytic condensers, in a real practical way, in that it has a lower power factor, which is important in A.C. motor starting condensers, where the power loss in the condenser must be kept at a minimum; changes capacity less at low temperatures, which is of importance where apparatus employing condensers is to be used out of doors; and has a greater capacity per unit area of foil than a condenser with a glycerin electrolyte; and therefore a condenser of a given capacity can be made in a smaller volume with a glycol electrolyte than with a glycerine electrolyte.
The ethylene glycol electrolytes give lower leakage than the glycerin electrolytes, and this is a positive advantage.
While the cost of ethylene glycol is greater than the cost of glycerin, and the cost per condenser with ethylene glycol electrolyte is greater than the cost per condenser with glycerin electrolyte, the advantages are such as to warrant the difference in cost to the users.
Ruben completed an ethylene glycol electrolyte as early as May 22, 1930, and filed his application covering it on June 19, 1930, and Georgiev was not working with ethylene glycol before July 1, 1930, when Siegel bought a gallon of ethylene glycol because Frankel suggested that it be tried along with the other things, such as glucose. Glycol and glucose were among the things which Georgiev, in November, 1930, listed to be tried as experiments, and did not, on December 9, 1930, know that ethylene glycol would make a superior electrolyte.
Ruben has an earlier date of invention and reduction to practice of an ethylene glycol electrolyte than Georgiev, and the Ruben patent here in suit is not anticipated by the Georgiev patent, No. 1,815,768.
Ethylene glycol stands midway between ethyl alcohol and glycerin.
The natural supposition was that it would not make as good an electrolyte as glycerin, as ethyl alcohol is not used for condenser electrolytes.
It was impossible, despite the similarities between the two substances, to predict that, because glycerin had made a good electrolyte in the past, ethylene glycol would make a good electrolyte in the future.
The discovery, which one would not naturally suspect, that glycol makes an excellent electrolyte, was Ruben's and not Georgiev's, and the discovery was such a good one that even the defendant has found it necessary to discard the old glycerin electrolyte entirely.
The first limitation which the defendant seeks to impose on the patent in suit is based on Ruben patent, No. 1,710,073.
Ruben patent, No. 1,710,073, discloses a dry electrolytic condenser with a viscous electrolyte of borax, boric acid, and glycerin. Such an electrolyte the defendant is entitled to make under its license. The defendant has not the right under the license to make an ethylene glycol ammonium borate boric acid electrolyte, which is not disclosed in Ruben's patents, Nos. 1,710,073 and 1,714,191, but is covered by Ruben patent, No. 1,891,207.
The license in question, which relates to Ruben patents, Nos. 1,710,073 and 1,714,191, provides in part: "No license is granted under any other patent now or hereafter owned or controlled by Mallory claiming subject matter not disclosed in said patents or either of them."
Glycerin is named in patent No. 1,710,073, and glycerin is a polyhydric alcohol, but all polyhydric alcohols, including ethylene glycol, are not disclosed in Ruben patent, No. 1,710,073. The claims of Ruben patent, No. 1,891,207, which are involved in this suit, call for a glycol or specifically for ethylene glycol, and every one of such claims definitely excludes glycerin from its scope, as glycerin cannot be said to be a glycol.
The defendant has since December 13, 1932, the date of the issuance of Ruben patent, No. 1,891,207, in suit, sold condensers that have been made with an ethylene glycol electrolyte containing crystals in suspension.
The second limitation which defendant urges against the Ruben patent, No. 1,891,207, in suit is based on an interference between Ruben and Edelman.
In that proceeding Mr. Ruben stated over his signature, which he identified, as follows: "I, Samuel Ruben, being a party to the above entitled interference, in pursuance of an agreement entered into the 26th day of December, 1929, hereby agree that no testimony will be filed in my behalf in the above entitled interference, and request that this statement be taken as the basis for an immediate judgment on the record in favor of said Philip E. Edelman in said interference."
I do not see the relevance of the interference proceedings to any of the issues before this court.
The Edelman application which was involved in this interference related to an electrolytic condenser in which the electrolyte comprised a mixture of one part of ammonium phosphate and eight parts of sodium phosphate, heated with only enough distilled water to make up for evaporation loss occurring during the process. When cooled, the salts crystallize out as a solid interlinked mass of crystals, resembling a rock in hardness and containing no uncombined solvent liquid.
That there was a marked difference between the paste electrolyte of the Ruben patent, No. 1,714,191, and the Edelman electrolyte of rocklike hardness, containing no uncombined solvent liquid, was recognized by the Patent Office.
Nothing in the Ruben-Edelman interference affects either the validity or the scope of the claims of the Ruben patent, No. 1,891,207, in suit, as such patent does not relate to any such composition, and neither the Mallory Company nor the Aerovox Corporation uses any such electrolyte.
The third limitation which the defendant seeks to impose is based on a statement in the specification as filed, that Ruben's ethylene glycol ammonium borate boric acid electrolyte, prepared as he describes, forms a clear solution when hot and crystallizes as the mixture cools.
Defendant contends that the invention and claims are limited to a dense, unmobile, or putty-like electrolyte. This contention is not sustained. When the directions of the patent are followed exactly as to proportions and procedure, a viscous mass is obtained with crystals in suspension. Claims 1 and 5 as filed with the original application describe the product accurately.
Defendant cannot escape liability because of the use of the word "crystalize" in the patent in suit.
When it is said that a solution crystallizes, it commonly refers to what happens to the electrolyte of the Ruben patent, No. 1,891,207, in suit, to the Mallory electrolytes, and to the present day Aerovox electrolytes; one of the components present in the solution becomes more insoluble and crystallizes. From that standpoint a "solution which crystallizes," and a "solution in which crystals form," are the same thing.
The bill of particulars limits the date which Ruben can claim for the making of his invention. It does not limit the scope of his claims, as that is dependent entirely on the prior art.
It hardly seems necessary to refer specifically to the prior art patents and publications, which defendant refers to under the heading "Equivalence of Glycerol and Glycol," because they obviously taught no one the superiority of the ethylene glycol electrolyte invented by Ruben, nor how to make such an electrolyte. Even the defendant does not use any electrolyte described in any of the prior patents which it cites, nor in the Georgiev electrolyte patent, but pays to the patent in suit the sincerest form of flattery, imitation, at the risk of an action for infringement.
The commercial success of the patent in suit is impressive.
The Mallory Company has nine licensees. The Mallory Company, the Sprague Specialties Company, and Electro Formation, Inc., sold during the year 1933 condensers with ethylene glycol electrolytes, under Ruben patent, No. 1,891,207, the patent in suit, amounting to $1,738,000. And it must not be forgotten that the defendant showed its high opinion of the patent in suit by making sales of $653,000 during 1933, which is not included in the last-mentioned sum; all of the dry ...