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May 14, 1936


The opinion of the court was delivered by: CAMPBELL

CAMPBELL, District Judge.

This is a suit for the alleged infringement of patent No. 1,815,768, issued to Alexander Georgiev assignor to Aerovox Wireless Corporation, now Aerovox Corporation for Electrolyte, granted July 21, 1931, and patent No. 1,789,949, issued to Alexander Georgiev assignor to Aerovox Wireless Corporation, now Aerovox Corporation, for Electrolytic Cell, granted January 20, 1931.

Both of the patents in suit were adjudicated valid and infringed by the Second Circuit Court of Appeals on appeal from the Southern District Court of New York, in Aerovox Corporation v. Concourse Electric Co., Inc., 65 F.2d 386.

 The defendant Micamold Radio Corporation manufactures and sells dry electrolytic condensers that are alleged to infringe the Structure patent 1,789,949, and makes electrolyte for its dry electrolytic condensers alleged to infringe the electrolyte patent 1,815,768.

 Both of the patents in suit were involved by way of counterclaim in the suit of Ruben Condenser Co. et al v. Aerovox Corporation tried in this court before me and reported at 7 F.Supp. 168. The Circuit Court of Appeals affirmed this court's dismissal of the counterclaim in the Mallory Case (Ruben Condenser Co. et al. v. Aerovox Corporation, 77 F.2d 266), because it agreed with this court that Mallory was entitled to immunity under the structure patent 1,789,949, and it further held that such immunity also applied to the electrolyte patent 1,815,768.

 As to the structure patent 1,789,949, this court has already analyzed all of the art of any consequence adduced in the case at bar and the Circuit Court of Appeals had previously found validity as to claims 11 and 19, and this court went further in also finding claim 18 valid and all three of said claims infringed by the Mallory condensers.

 As to the electrolyte patent 1,815,768, claims 8, 10, and 11, here in suit, had all been held valid by the Circuit Court of Appeals in the Concourse Case. Defendant in the case at bar has failed to raise a single defense that was not presented in the Concourse Case and again presented more fully in the Mallory Case.

 The Circuit Court of Appeals found in the Mallory Case that glycol is the equivalent of glycerin in this art of electrolytic condensers. Glycol is disclosed as such equivalent in patent 1,815,768 here in suit.

 By stipulation certain testimony and exhibits in the Mallory Case may be received in evidence with the same force and effect as if the corresponding witnesses had so testified, and the said exhibits had been offered in the present suit.

 Will first consider the patent in suit No. 1,815,768, which is herein called the electrolyte patent, claims 8, 10, and 11 of which are in suit.

 This patent was upheld in the Concourse Case in the Circuit Court of Appeals of the Second Circuit, 65 F.2d 386, which recognized that it was an invention of pioneer character, saying at page 389: "This made a new electrolyte never before used in a dry condenser, one which for the first time produced a film which would resist voltages of five hundred."

 The evidence in the case at bar and also in the Concourse Case and the Mallory Case does not show that, prior to Georgiev's invention, any one had taught how to make a practically useful dry electrolytic condenser capable of withstanding 500 volts, either according to Georgiev's, or in any other manner. In fact, prior to Georgiev's invention I am convinced that there did not exist dry electrolytic condensers of more than a small fraction of 500 volts.

 Electrolytic condensers of fairly high voltage of the wet type are in the prior art, but the maximum limit appears to be 400 volts.

 There prior wet electrolytic condensers were disposed of by the Circuit Court of Appeals in the Concourse Case, even though Zimmerman 1,074,231 had gone so far as to use the same raw ingredients as Georgiev used.

 In both the Georgiev patent 1,815,768 and the Zimmerman patent 1,074,231, the ingredients used are the same and are (1) boric acid, (2) an alkali borate, and (3) a polyhydric alcohol. Boric acid is used as such. The preferred alkali borate is ammonium borate either introduced as such or by the combination of boric acid with ammonia water or ammonia gas. The polyhydric alcohol may be glycerin "or any alcohol with two or more hydroxyl radicals such for instance as glycol glucose, etc."

 Georgiev's process consists not merely in heating the mixture to cause the solids to enter into solution in the polyhydric alcohol as in the prior art, but the invention involves continuing the heating long after the solution is completed, by boiling said solution, in which operation the boiling point thereof steadily rises and this boiling is continued until the mass reaches a definite predetermined boiling point. The boiling must not, however, be carried too far, for when the boiling point rises above permissive values, the electrolyte loses efficiency and becomes worthless.

 Georgiev's simple procedure has practical effects. The experts agree that when a given mixture of raw ingredients, including polyhydric alcohol, boric acid, and ammonia (the latter either combined with some of the boric acid or added in the form of ammonia water), has been heated under conditions permitting the loss of water, regardless whether the heat had been applied slowly for a longer period of time or more vigorously for a shorter period of time, then by the time the product has acquired a given boiling point, a definite amount of water will have been evaporated; the chemical reaction to form glyceryl (or glycol) borate and ammonium glyceryl (or glycol) borate will have progressed to a certain extent; and the electrolyte will have acquired definite characteristics from the standpoint of breakdown voltage and power factor. The higher the boiling point the more water will have passed off, the higher the breakdown voltage, and the higher the power factor.

 The method of control taught and claimed by patent 1,815,768 and protected by claims held valid in the Concourse Case is dependable, vital, and unique, as success has not been attained in any other way.

 The Georgiev patent formulates the following simple directions for making a 500-volt condenser from the particular formula of ingredients illustratively given: "By the simple expedient of heating the mixture as above set forth to boiling and continuing until the boiling point at atmospheric pressure is about 130 degrees C and holding the solution at this temperature for preferably at least fice minutes, the preparation of the electrolyte is completed."

 The completion of the boiling operation as disclosed in the patent could be determined by its temperature, or its loss of weight due to the amount of water given off, or by its viscosity, since said three determining characteristics are interrelated for the final electrolyte as obtained from any given formula of raw ingredients.

 The extent of the chemical reaction depends on the amount of water driven off.

 "Boiling point control" is the easiest of the three interrelated alternative modes of control, and that is why it is used, in practice, in preference to viscosity control or control by measurement of water lost and is specified in the foregoing quotation from the patent and is used by Aerovox -- and also by Micamold.

 The specification of patent 1,815,768 at its end says: "* * * But reasonably satisfactory results are obtained though the electrolyte in original preparation is boiled for a much less period of time than according to the preferred practice above set forth."

 The invention is not limited to any one particular boiling point. This appears not only on the face of the patent, but was also found by the Circuit Court of Appeals in the Concourse Case, where claims 8, 9, 10, and 14 were found to be infringed despite the doubt there expressed by the court that the defendant "ever brought this mixture to a temperature of 130 degrees C."

 Patent 1,815,768, therefore covers "boiling point control" of electrolytes of polyhydric alcohol, ammonia, and boric acid, and such control to a boiling point of "about 130 degrees C," is but one specific embodiment of the invention.

 It does not seem to me that plaintiff has attempted in the suit at bar to limit the broad term "boiling," as used in claim 10, to the more specific concept of "controlled boiling"; on the contrary the plaintiff maintains that "boiling," as broadly recited in claim 10, is as new and original with Georgiev on the present record, as it was on the Concourse record on which said claim was sustained.

 The Circuit Court of Appeals in sustaining broad claim 10, held that boiling, as applied to an otherwise old and known solution of electrolyte ingredients, was not obvious and constitutes invention. The step was not obvious to skilled workers, and that is clearly apparent when you consider the fact that the engineers of the General Electric Company and of the Westinghouse Electric & Manufacturing Company, whose patents are set up in Defendant's Exhibit B as anticipations, did not teach the boiling of an electrolyte solution.

 The new attacks on validity in this case do not seem to me to differ materially from the attacks made unsuccessfully in prior litigations, and may be divided into two classes as follows: (1) "New" chemistry; (2) "New" alleged anticipations consisting of:

 (a) Edenburg patent, No. 1,924,711, which issued on an application under which Aerovox was licensed before Georgiev made his invention, and which was unsuccessful.

 (b) Ruben patent, No. 1,891,207, which was held invalid in the Mallory Case.

 I will take up these defenses in the order named.

 "New" chemistry. As I have hereinbefore pointed out, the procedure in carrying out the method of patent 1,815,768 involves heating the selected raw ingredients not merely until the solids pass into complete solution, but to boiling and then continuing this boiling until a definite and selected boiling point at atmospheric pressure has been reached. Chemical reactions to the desired extent and loss of the desired amount of water occur as an incident of this simple procedure taught by Georgiev.

 Plaintiff's expert, Dr. Barsky, in the Mallory Case admitted that such reaction occurs, but advanced the theory that it is carried to completion in the cold, and that the continued heating or boiling merely serves to drive off water created as soon as the ingredients are mixed and even before heating.

 In the case at bar, defendant's expert, Cowles, admits that such reaction occurs and further admits that the reaction is advances as the boiling progresses. The witness states the hypothesis that in the heating and boiling, the orthoboric acid (H[3]BO[3] used, breaks down to metaboric acid (HBO[2])by splitting off water (H[2]O). Whether we accept the Cowles theory or the one set forth in the patent, the end product, that is, what goes into the final electrolyte is as defendant's expert Cowles admitted, in either event glycerol (or giycol) borate and the corresponding ammonium compounds, and two molecules of water, (2 H[2]O).

 The chemistry devised by the witness Cowles is unsound. The reaction stated in the old Newth test book, on which the witness Cowles relied, can be effectively carried out only in complete absence of water as Mr. Cowles agreed. As long as water is present, no metaboric acid could be formed, and it is admitted, by Cowles, that even in the finished electrolyte there is water, and without it, the electrolyte would be worthless. The compound formed in the reaction suggested by Cowles in Defendant's Exhibit U has no dissociated hydrogen, without which neutralization with ammonia to form ammonium glycerol (or glycol) borate could not possibly occur. With the conventional formula appearing in the patent, however, shown at A in Plaintiff's Exhibit 13, dissociated hydrogen is present to permit the desired chemical combination with ammonia.

 This defense does not attempt to establish the validity of the Georgiev patent on the ground that it does not teach something new and useful, but on captions criticism of the conventional formula by which the patent accounts for the results accomplished. No knowledge of abstruse chemistry is needed to duplicate Georgiev's results by simply following the boiling point control directions which he was the first to discover.

 "New" alleged anticipations.

 The application for Edenburg patent, No. 1,924,711, filed January 25, 1928.

 The specification of Edenburg, as filed January 25, 1928, proved to be a failure even on low voltages of 6 volts, and yet defendant argues that it would suggest to any one skilled in the art, the commercially successful process and electrolyte that Georgiev taught, and that Micamold is using for making high-voltage condensers. I reject this defense, as was done in the Concourse Case and the Mallory Case. It is purely hindsight argument, and the Georgiev patent must have required invention, or the prior process would have suggested the improvement to the man skilled in the art promptly after the demand for such improvement arose, instead of losing valuable time before the invention made its appearance.

 The defendant's contention is defeated in the case at bar by affirmative history.

 Aerovox was induced by Edenburg a few months after he filed his application for patent 1,924,711 to attempt the manufacture of electrolytic condensers according to his process on a royalty basis. Edenburg, with a strong financial interest so to do, did his best to supervise and instruct the making of condensers by Aerovox, but failed. The making of a small number of satisfactory low-voltage condensers out of thousands of failures in hit or miss attempts at production, without the knowledge of how to reproduce uniformly satisfactory results at will, is not a true contribution to the art. United Chromium v. International Silver Co., 60 F.2d 913, at page 917, in which the court said: "It is plain that they often got good results; it is equally plain that they did not know on what those results depended and could not rely upon producing them. * * * Chance hits in the dark will not anticipate an invention."

 Georgiev commenced the task of developing a workable process, first for making low-voltage dry electrolytic condensers, later, much higher voltages, but it was only after a long series of experiments that he came by his solution, and the theoretical explanation of his success was not clear to him at the end.

 The value of the Georgiev invention over Edenburg is shown by the fact that by resort to the Georgiev invention 100,000 scrapped condensers prepared under Edenburg's directions by Aerovox were salvage; they were satisfactorily reimpregnated with Georgiev's electrolyte and sold.

 Mr. Louis Edenburg, the patentee of patent 1,924,711, was not called by the defendant, nor was his testimony in the Mallory Case stipulated, as it might have been, and when plaintiff sought to invoke such testimony in rebuttal the defendant resisted that attempt.

 Edenburg, the inventor, did not succeed in 1928, with the same process with which it is now asserted that Cowles succeeded in 1936, and I am convinced that if Cowles obtained better results in 1936 than did Edenburg in 1928, it was because Georgiev's teachings were available to and used by Cowles in 1936, and unavailable to and not used by Edenburg in 1928.

 The Edenburg patent discloses, page 1, line 36: "I prefer to employ aluminum foils interleaved with paper and unpregnated in a bath of glycerin and borax. To permit the glycerin and borax solution to permeate the condenser more quickly and thoroughly, the impregnation may be done in a vacuum and the ...

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