The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is an action based on the alleged infringement of patent No. 1,710,073, issued to Samuel Ruben, for electrical condenser, granted April 23, 1929, on an application filed March 21, 1927; and patent No. 1,714,191, issued to Samuel Ruben, for electrical condenser, granted May 21, 1929, on an application filed December 22, 1926, by the defendant Copeland Refrigeration Corporation, in the sale of certain dry electrolytic condensers in conjunction with electric motors supplied by Delco Products Corporation, some of which electrolytic condensers were manufactured by Delco Products Corporation, and some by Aerovox Corporation, of Brooklyn, N.Y.
No further consideration as to those manufactured by Aerovox Corporation is necessary, as it was licensed under the patents Nos. 1,710,073 and 1,714,191 in suit, and the charge of infringement as to those condensers was limited to the Ruben patent, No. 1,891,207, and by stipulation the decree in this case as to Aerovox condensers is to conform to the decree in the case of Ruben Condenser Co. and Mallory v. Aerovox Corporation, 77 F.2d 266, in which case the Circuit Court of Appeals of this Circuit has held the Ruben patent, No. 1,891,207, invalid.
The plaintiff Ruben Condenser Company is the owner of the patents in suit, and the plaintiff P.R. Mallory & Co., Inc., is the holder of an exclusive license under the patents in suit, with the right to grant sublicenses.
Condensers manufactured and sold by the Mallory Company are marked with the numbers of the Ruben patents, 1,710,073, 1,714,191, and 1,891,207; those manufactured and sold by the Aerovox Company under license are marked with the Ruben numbers 1,710,073 and 1,714,191, and those manufactured and sold by the Sprague Specialties Company and Magnavox Company, under license, are marked with the numbers of Ruben patents, 1,710,073 and 1,714,191.
The defense of this suit is being conducted by Delco Products Corporation.
This suit is based on claims 2, 5, 6, 7, and 8 of the Ruben patent, No. 1,710,073, and claims 4, 5, 6, and 7 of Ruben patent, No. 1,714,191.
The defendant has interposed an answer alleging the defenses of invalidity, double patenting, and noninfringement.
The patentee in his specification of patent No. 1,710,073 says:
"This invention relates to electric condensers and has for an object the provision of a suitable spacer, for use particularly in separating the electrode plates of a condenser containing a fluid or semifluid dielectric or electrolyte medium, which will not react electrically with the electrode surfaces.
"Another object is the provision of an electrical condenser having both a relatively high capacitance when used in alternating current circuits and a high direct current storage capacity which possesses long life with good operating characteristics over a wide range of atmospheric conditions.
"Another object is the provision of an electrolyte composition for an electrolytic condenser which will possess long life and will automatically and quickly revive itself after any temporary removal of its water of solution."
He further says: "Briefly these objects are accomplished by employing electrode plates at least one of which (preferably the anode) is a film-forming composition, separating said plates uniformly by a retiform or textural spacer which has been treated so that its individual fibres are coated with a non-conductive film, coating the spacer with an electrolyte in the form of a paste containing a film-forming electrolyte suspended or mixed with a stable hygroscopic material of preferably high viscosity, as glycerine, and applying a unform pressure to the condenser plates or elements to insure continuous contact between the electrolyte and the electrodes or electrode coatings."
The patentee in the specification of the patent No. 1,714,191 says:
"This invention relates to electrostatic condensers, and it relates more particularly to electrical condensers of the electrolytic type.
"According to the terms of my invention the device consists of film-forming electrodes separated by an electrolyte composed of an hygroscopic material with a small percentage of a stablizing solution and a neutral or slightly alkaline salt in suspension with said stabilizing solution and said hygroscopic material and held in a fixed paste-like density and concentration by an insulating gauzelike textile, and suitable pressure applied to maintain close surface contact between the electrolyte and the electrodes."
He further said: "For the electrode material I prefer thin aluminum sheets having an oxide film formed upon the surfaces before assembly, and as the electrolyte, glycerin having a relatively small amount of water and having mixed therewith suspended powdered sodium bicarbonate, a small percentage of boric acid being present to stabilize the paste which has a sodium borate content due to reaction of the boric acid with the sodium bicarbonate and to increase the conductivity of the mixture."
According to the stipulation (Exhibit 9) the Delco condensers are manufactured as follows:
"1. Two strips of aluminum foil are provided with a suitable dielectric film by means of a suitable film-forming process.
"2. Two strips of the filmed aluminum foil and two strips of 80X80 mesh cloth (80 threads per inch, in each direction) are arranged as alternate layers, and the desired length of the composite strip thus formed is wound upon an arbor, suitably fastened, and removed from the arbor.
" 3. The resulting unit, called a section, is then immersed for about 5 1/2-7 1/2 hours in an electrolyte comprising 65% glycerin (C.P.) and 35% ammonium borate (Pacific Coast Borax Co.), which electrolyte is constantly agitated and maintained continuously at a temperature of approximately 235 degrees F. The electrolyte has a specific viscosity between 8 and 9, as measured by a Saybolt Viscosimeter at 200 degrees F. and compared with the viscosity of water at 60 degrees F.
"4. After impregnation as described, the section is permitted to drain and cool, is reformed, tested and wrapped in varnished cloth, and is placed in a suitable leak-proof container, the lid of which is soldered in place. Prior to the soldering operation the two aluminum strips are connected to suitable terminals extending through the lid of the container."
The Delco condenser (Exhibit 21), similar to Plaintiffs' Exhibit 8, as sold by the defendant Copeland Refrigeration Corporation within the Eastern District of New York, was opened in court and comprised two aliuminum foils, each provided with a dielectric film, interleaved with two gauze spacers. rolled up and impregnated with an electrolyte.
The electrolyte was of a viscous pastelike consistency.
The rolled condenser section was wrapped in black varnished cloth, then in corrugated waxed paper or cardboard, and inclosed in a tin can, the inside of which was coated with a black lacquer or enamel. From each aluminum foil projected a tab, which was connected with a threaded stud passing through the top of the can.
As to the rolled condenser section, insulating wrapping inclosing metal container, and connection of the foils with threaded studs passing through the top of the can, the Delco structure is a practical duplicate of that shown and described in the patents in suit.
The Delco condenser is quite similar in construction to the Aerovox condenser, the Delco electrolyte being more sticky and less fluid than the Aerovox electrolyte. Both the Delco and Aerovox condensers are obviously used to perform the same function in connection with motors manufactured by Delco Products Corporation.
The two Ruben patents, Nos. 1,710,073 and 1,714,191, in suit were discussed by the Circuit Court of Appeals for the Second Circuit, in the case of Aerovox Corporation v. Concourse Electric Co., 65 F.2d 386, 387, 389.
Uncontested decrees have been entered in the six following entitled suits, upholding the validity of the Ruben patents, Nos. 1,710,073 and 1,714,191, in suit:
Howell Electric Motors Company, consent decree.
Polymet Manufacturing Corporation, decree after inquest.
Century Radio Products Co., Inc., decree after inquest.
Polymet Manufacturing Corporation, decree pro confesso.
Alan Radio Corporation, consent decree.
Samuel Roth (federated purchaser), decree pro confesso.
The term "dry electrolytic condensers" is generally used in the trade to differentiate from the well-known wet electrolytic condensers of the prior art, and is so used here.
With the exception of Edelman's rockhard A-condenser, however, the so-called dry electrolytic condensers contain an electrolyte of viscous paste-like consistency, but are dry enough to permit of their being packaged without the necessity for leak-proof containers which are required with wet electrolyte condensers.
The sales of the plaintiff P.R. Mallory & Co., Inc., and its licensees, of condensers marked under the patents in suit, from January 1, 1931, through the first quarter of 1935, were in excess of $8,000,000, and the royalties paid for that period exceed $350,000, and in addition approximately $90,000 has been paid by licensees as part consideration for the execution of their license contracts. From the end of 1926 and through 1930, the Grigsby-Grunow-Hinds Company paid about $35,000 in royalties under its license.
Most of the licensees with the exception of the Aerovox Company are licensed not only under the patents in suit, but under fourteen other patents, including the Ruben patent No. 1,891,207, which patent was held to be invalid by the Circuit Court of Appeals of this Circuit, in Ruben Condenser Company and P.R. Mallory & Co., Inc. v. Aerovox Corporation, and the evidence does not show what portion of the royalties was paid under the two patents in suit.
Plaintiffs showed on the trial that certain condensers made and sold by the plaintiff Mallory Company are marked under the patents in suit, and have a wide range of adaptablility, but the evidence offered on the trial does not show the character or make-up of the electrolytes embodied in any of these condensers.
The same may be said of the condensers made by the licensees of the Mallory Company, as no evidence was offered on the trial as to the character or make-up of the electrolytes used.
The sublicensees under the Ruben patents are required to contribute to the expenses of the litigation against infringers, in addition to the royalties they pay, and the installments in lieu of cash consideration at the time they receive their licenses. The plaintiff Mallory Company also required a provision for price control, which was proper. United States v. General Electric Co., 272 U.S. 476, 490, 47 S. Ct. 192, 71 L. Ed. 362.
The evidence shows that Delco Products Corporation purchased condensers, licensed under the patents in suit, for some time, and that it did not commence to make and sell the alleged infringing condensers until after it had applied for, and been refused by the plaintiff Mallory Company, a license to manufacture condensers under the patents in suit.
This together with the fact that the sublicensees first satisfied themselves that they could not manufacture commercial dry electrolyte condensers without infringing the Ruben patents, and applied to the plaintiff Mallory Company for licenses, shows what they thought of the patents in suit.
The defendant offered in evidence as prior art the following:
British patent, No. 1069, A.D.1896, to Charles Pollak, for improvements in or connected with electrical condensers, accepted January 15, 1897. It purports to be the original disclosure of the film-forming property of aluminum and its utility as a condenser. The specification stresses the "preforming" of the plates in a vessel or jar containing an alkaline electroylte solution in which two aluminum plates or electrodes are arranged (see structures for wet electrolytic-condensers, shown in Peek patent, No. 1,008,860, and Zimmerman patent, No. 1,074,231).
Pollak adds: "The alkaline solution may be replaced by any other suitable electrolyte (say, a gas, if desired, or any convenient solid or semi-solid body) which under the circumstances named will form a coating such as is above described upon the positive electrode." Page 2, lines 23-26; page 3, lines 51-54.
He did not suggest how to prepare "any other suitable electrolyte."
A dry electrolytic condenser had not then arrived, and a condenser having a gas electrolyte has not yet been shown to have been devised.
Neither the patents in suit nor Delco use the structure or electrolyte of Pollak.
Swiss patent, No. 81,050, to Prof. Dr. H. Greinacher, for electrolytic valve cell, published May 1, 1919. This patent relates to electrolytic valve cells.
The term "electrolytic valve" is used to describe an electrolytic rectifier.
While it is true that the electrolytic rectifiers, electrolytic condensers, both wet and dry, and electrolytic lightning arresters may be said to be of the same general type, in that they all make use of a film formed on an aluminum plate, the fact is that these devices use different properties of the film, and therefore require different physical embodiment and different electrolytes.
Electrolytic condensers as such are not mentioned anywhere in that patent.
That patent refers to the electrolyte liquid and always to a liquid, but it nowhere specifies what electrolyte liquid is intended. The needs and requirements of a rectifier do not suggest the needs and requirements or the endurance of the condenser.
The witness Booe's tests demonstrated the inapplicability of Greinacher's suggestions as to dry electrolytic condensers.
Patent No. 900,278, to Arthur S. Hickley, for electrolytic alternating-current rectifier, granted October 6, 1908, on an application filed November 12, 1907. This patent relates to an alternating current rectifier, with an exceptional form of cells. Porcelain cups 5 and 6 are interposed between the two electrodes, with openings near the bottom of one and the top of the other, to provide for the circulation of the electroylte and the passage of the electric current through a long tortuous path from one electrode to the other. To reduce the collection of oxides and precipitates in the cell, and to lower the freezing point of the electrolyte, glycerin is added to the electrolyte solution, preferably in an amount equal to the water, but the proportions may be varied. This does not seem to me to warrant the contention that it teaches that any consistency of electrolyte mixture could thus be produced, varying all the way from a completely mobile liquid to a solid; as it appears to me that to follow the Hickley disclosure, you would make the electrolyte fluid enough to circulate. That patent deals exclusively with a rectifier, and not only would it not make a usable or worth-while wet condenser, but it in no way resembles a dry electrolytic condenser.
The Hickley patent was cited by the Patent Office in the prosecution of both of the patents in suit.
Neither the patents in suit nor Delco use the construction or electrolyte disclosed in the Hickley patent.
Patent No. 1,008,860, to Frank W. Peek, Jr., assignor to General Electric Company, for electrolyte for aluminum cells, granted November 14, 1911, on an application filed February 5, 1909.
That patent relates to an ordinary jar or cell type of structure having rigid electrodes mounted in it, widely separated. The electrolyte solution contains a borate and a tartrate. In particular, Peek is seeking the prevention of harmful deposits on the anode plate, which may occur in ordinary use or be caused by freezing, and the patentee says that the addition of tartrates to the borates minimizes this difficulty. In some instances a small amount of glycerin, up to about 10 per cent., may be added, causing the electrolyte solution to react acid, helping to overcome the formation of these harmful deposits, but such addition of 10 per cent. of glycerin to the Peek borate-tartrate electrolyte does not materially affect its fluidity. There is no suggestion of the use of anything other than a mobile liquid electrolyte. A dry electrolytic condenser electrolyte would not be useful in the Peek structure, because of the high specific resistance of the electrolyte and the long path between the electrodes.
That patent was cited by the Patent Office in the prosecution of the patent No. 1,714,191 in suit, and was also mentioned by the Examiner in his first action on the patent No. 1,710,073.
The Peek patent was held not to be a pertinent reference against the Georgiev patent on a viscous electrolyte of glycerin, ammonium borate and boric acid, by the Circuit Court of Appeals of this Circuit, Aerovox Corporation v. Concourse Electric Co., supra.
Neither the patents in suit nor Delco use any of the features of the Peek patent, and I fail to find therein any disclosure of the structure or electrolytes of the patents in suit or Delco.
Patent No. 1,074,231, to Clarence I. Zimmerman, James G. Zimmerman, administrator of said Clarence I. Zimmerman, deceased, assignor to General Electric Company, for electrolytic condenser, granted September 30, 1913, on an application filed March 31, 1906.
The structure shown in this patent is almost identical with the Peek patent.
According to the specification, the electrolytes comprise as essentials the aqueous solutions of certain boric acids and their alkali and ammonium salts, and the implication of the whole specification is that the patentee is talking about mobile aqueous solutions, and nothing else would be usable in that structure. According to the specification, the presence of glycerin has been found advantageous in reducing corrosion of the electrodes, and glycerin in quantities up to 30 per cent. or 40 per cent. makes orthoboric acid more active. This is not a direction to add up to that percentage, but an injunction not to add more.
It does not seem to me that Exhibit O, which was practically solid, was prepared in accordance with the directions found in that patent.
The teaching of that patent, as I read it, requires in aqueous solution. In the light of present knowledge, the teaching of the Zimmerman patent, that the concentration of the electrolyte solution should preferably be as great as possible, because the conductivity of the electrolytes is thereby increased, is disadvantageous in wet electrolytic condensers.
The failure of the Zimmerman electrolyte when glycerin is used, both in wet and dry electrolytic condensers, was shown by the witness Booe.
The Zimmerman patent was cited by the Patent Office in the prosecution of patent No. 1,710,073 in suit.
It was found by the Circuit Court of Appeals of this Circuit, in Aerovox Corporation v. Concourse Electric Co., supra, that the Zimmerman patent was insufficient, stating that it would be gratuitous to assume that a decrease in the water of Zimmerman's wet electrolyte would result in Georgiev's electrolyte for a dry electrolytic condenser.
Neither the structure nor electrolyte of the patents in suit or Delco are disclosed by Zimmerman.
Patent No. 603,722, to Charles S. Bradley, for electric condenser, granted May 10, 1898, on an application filed July 29, 1897.
Patent No. 503,186, to Alexander Wurts, assignor to the Westinghouse Electric and Manufacturing Company, for electrical condenser, granted August 15, 1893, on an application filed October 5, 1892.
British patent No. 146,925, to Leon Segal, for improvements in electric condensers, accepted May 19, 1921.
Because the Wurts and Segal patents are so closely related to the Bradley patent, they are all considered together.
In the Bradley patent is disclosed a condenser of the nonelectrolyte type, the dielectric between the condenser plates being stearate of lead. There are also interposed between the condenser plates sheets of an openwork fabric, such as mosquito netting, to prevent short-circuiting by accidental contact of opposite plates.
Wurts patent, No. 503,186, is similar in principle except that the dielectric is elaine oil. The electrodes are of tinfoil, separated by strips of cotton or other textile, or absorbent material rolled up, and the whole roll submerged in the insulating oil, the oil so soaked in the textile substance being the dielectric.
A condenser could not be made by simply substituting an electrolyte for the insulating oil of Wurts, but it would also be necessary to discard the tinfoil electrodes and substitute aluminum electrodes, provided with dielectric films and the gauze spacers, and discard the oil and substitute an electrolyte composition that is compatible with ...