FRANK A. KAUFMAN, District Judge.
This is an action for infringement of certain claims of United States Letters Patent No. 3,110,293, issued November 12, 1963, on an application of Neville M. Reiners filed May 24, 1961 (the Reiners patent). Plaintiff, Cummins Engine Company, Inc. (Cummins) is an Indiana corporation and has its principal place of business at Columbus, Indiana, where it manufactures diesel engines, primarily for use in trucks made by other manufacturers. Cummins is the owner of the entire right, title, and interest in and to the patent in suit and has been since the patent issued. Defendant, General Motors Corporation (General Motors), is a Delaware corporation and has its principal offices in Detroit, Michigan, and has numerous manufacturing, sales and service facilities located throughout the country. General Motors manufactures Toro-Flow engines at its GMC Truck and Coach Division in Pontiac, Michigan, and this division also has a regular and established place of business in Silver Spring, Maryland. Those Toro-Flow engines are the accused engines in this proceeding. Defendant, McCall-Boykin Truck, Inc. (McCall-Boykin), is a Delaware corporation having its principal place of business in Baltimore, Maryland, where it sells and services the accused Toro-Flow engines.
FINDINGS OF FACT
A. Diesel and Gasoline Engine Technology.
The Reiners patent in suit concerns the open chamber type of diesel (or compression-ignition) engines. This class of diesel engines is characterized by a mode of combustion involving the direct injection of fuel into the cylinders of the engine. In other respects, however, the class shares certain common operating features with all other classes of diesel engines. On a broader level, the diesel engine itself differs from its predecessor, the conventional gasoline (or spark-ignition) engine, in some respects and is similar or identical in others. In order to assess the significance of the Reiners patent as it applies to one class of diesel engines, it is helpful to examine the similarities and differences that run through gasoline and diesel engine technology.
1. The Four-Stroke Cycle.
Basic to all these engines is a common four-stroke power cycle
2. Combustion System Designs.
The differences between the gasoline and diesel engines are manifested in the second stroke of the cycle. In a diesel engine, the fuel is ignited by the heat generated from highly compressing the trapped air. Because a diesel engine utilizes the heat of compression to ignite the fuel, a relatively high degree of compression is required. The ratio of the volume of the air before compression (which is equal to the volume of the cylinder and is called the displacement) to the volume of the air at the end of the compression stroke when it is squeezed into a small space (defined as the clearance volume) is, for diesels, usually 16:1 or more. Ignition takes place when, as the piston approaches the top of the compression stroke, a determined amount of fuel is injected under high pressure into the clearance space and is mixed with the highly-compressed, very hot air (see Figures 2, 3). In order
to achieve proper combustion, the injection of the fuel, the mixing of the fuel with the compressed hot air and the ignition must all occur within a very short period of time, on the order of about 1/500th second.
On the other hand, in a gasoline engine, the fuel and air are premixed in a carburetor and intake manifold and the combustible mixture is then drawn into the cylinder during the intake stroke. When the piston is at the top of the
The higher compression ratio in the diesel engine of course means that there is a higher expansion ratio of the gases during the power stroke. More power per cycle can thus be generated, all other things being equal, and this adds to the efficiency of the diesel engine.
Differences in the modes of combustion, however, create an additional problem for the diesel engine designer that cannot be solved by reference to the gasoline engine art. Because in a diesel engine the fuel must be injected, thoroughly mixed with the air and ignited within a very small period of time and in a small space, the clearance volume of the cylinder must be accurately designed and matched with an appropriate injector spray. Tolerances of error in both design and machining must be minimized, and as the compression ratio is increased for a given displacement this problem is accentuated.
Some diesel designers have attempted to alleviate this problem by using a divided combustion chamber
The diesel engines of the patent are characterized as being of the open chamber type. In such engines, the fuel is injected directly into the cylinder as the piston nears the top of the compression stroke. In order to achieve proper combustion, the fuel must be atomized into fine droplets, the spray must be dispersed and the droplets must penetrate into the clearance volume. A common combustion chamber design, in widespread use long before the Reiners patent, is based on a Mexican Hat, or Hesselman, chamber. This arrangement is illustrated in Figure 4. The cone-shaped
3. The Stroke-to-Bore Ratio.
Commercial pressures to develop engines with more power in a smaller package induced diesel and gasoline engine designers to adopt a variety of techniques to achieve more compact machines. These methods included utilizing better lightweight materials, streamlining, and using the "V" cylinder design.
The advantages in compactness yielded from using lower stroke-to-bore ratios for a given displacement are the same for both gasoline and diesel engines. First, by holding the piston speed constant and shortening the stroke, the number of revolutions per minute (rpm) of the crankshaft is increased in a corresponding percentage.
B. The Patented Engines.
During the summer and fall of 1959, Reiners directed several members of the Cummins research staff to conduct independent theoretical analyses of the effects on fuel efficiency of decreasing the stroke-to-bore ratio. Four factors caused by a lower stroke-to-bore ratio influence fuel efficiency. By increasing the bore relative to the displacement, larger intake valves could be placed in the cylinder heads, thus giving freer air "breathing" on the intake stroke.
Reiners then began to experiment in order to find a working combustion system design. After much cut-and-try testing, he settled on a system practically identical to the one he had used in the Vera, which, in turn, had been well-known long before the Vera itself was designed. Indeed, Reiners admits that the only real difference between the Vera and the Vim (the Vim is one of four engines constructed under the patent here in suit, the others being the Vine, the Val and the Vale) combustion systems was the dimensions
The first Vine engine was tested in the Cummins research laboratory before the principal officers and directors of Cummins on May 24, 1960.
2. The Patent Applications.
On May 24, 1961, Reiners filed his first application for a patent. In that application, he stated that the objects of his new engine were:
Reiners then acknowledged that short-stroke gasoline engines have been commercially built, but that commercial activity in the diesel field had been unsatisfactory "because of the basic problem of obtaining good combustion efficiency in the short stroke diesel."
These values did not purport to contribute to the efficiency of the combustion system in any way. They were stated as significant only with respect to the compactness of the engine. An illustrative drawing was included in the patent application (see Figure 6).
Reiners' claim to an open-chamber diesel engine with a stroke-to-bore ratio of less than 0.9 was rejected as unpatentable.
* * * Applicant's attention is directed particularly to the patent of Nichols. In column 2, lines 35-46, Nichols recognizes the basic problem which applicant is apparently attempting to solve—that of reducing the stroke-to-bore ratio without the resultant impinging of the fuel sprays on the cylinder head and piston surfaces. Nichols' solutions to the problem, as is evidenced in his drawings and discussion, are the same as applicant's solutions, yet Nichols recites a stroke-to-bore ratio greater than unity. With the same structural and theoretical solutions as Nichols discloses applicant selects a ratio of less than 0.9 and thereby secures a more compact engine by lowering the height thereof. This does not amount to invention inasmuch as the shortening of the piston stroke would obviously result in lowering the engine height.
Reiners thereupon cancelled all claims then being sought and submitted an amendment to his application.
The introduction of these new claims satisfied the Examiner, and the patent was issued on November 12, 1963. The prior art references cited by the Examiner did not include the prior art Cummins Vera or the Ford 172D.
With respect to the numerical parameters in the claims, the claims of the patent are stated in a form similar to that of other patents regularly issued by the Patent Office in the internal combustion art as well as other fields.
C. The Prior Art.
Cummins does not contend that it is the combustion systems used in the Vim/Vine that made those engines unique and patentable. Indeed, the claims in the patent are broad enough to cover shortstroke diesels of the open-chamber type with a plurality of cylinders regardless of the combustion design that is utilized. The combustion design illustrated in the patent drawings is relevant only in that it shows a designer enough for him to be able to construct a commercially operable engine. Inasmuch as the drawings do not reveal anything novel in that combustion design, the patent is, in effect, informing prospective designers that adequate combustion can be achieved by experimenting on the Mexican Hat arrangement. For this purpose, dimensions need not be shown, nor must the drawings be to scale. The patent specifications taken together with the accompanying drawings provide sufficient data to enable a designer skilled in the art to achieve acceptable combustion, but only after considerable cut-and-try experimentation based on the arrangement illustrated and described in the patent.
Cummins' argument is that the uniqueness of the engines described by the patent lies in the dimensional parameters that are specified—to wit, a stroke-to-bore ratio less than 0.9, a connecting-rod-to-bore ratio less than 1.75, and a deck-height-to-bore ratio less than 2.8. Cummins urges here, as it did to the Patent Examiner after amending its application, that it is the cooperation of
First, as all the experts agree and as the patent itself recognizes, in any engine the connecting rods are made as short as possible.
The reduction of the deck height (and the deck-height-to-bore ratio) also follows as a matter of standard design practice.
In sum, therefore, there is a direct relationship between these ratios.
Second, there is general agreement among the experts that there is no abrupt improvement in the operation of the type of engine involved here with the three ratios per se specified by Reiners, as contrasted with an engine with ratios slightly above those values.
Third, the use of the stroke-to-bore, connecting-rod-to-bore and deck-height-to-bore ratios specified in the Reiners patent was pioneered in the automobile industry in the evolution of compact high-powered gasoline engines.
Fourth, the terms "connecting-rod-to-bore ratio" and "deck-height-to-bore ratio" appear to have been coined by Reiners. There are no references or mention of these ratios in either the diesel literature prior to the Reiners patent (including the Cummins bulletins) nor the diesel literature following the patent.
A parameter that was in common use by diesel engine designers is the L/R ratio, that is, the ratio of the length of the connecting rod to the crank radius or throw. The common practice was to choose an L/R ratio less than or equal to 4.0.
Fifth, comparisons with prior art open-chamber diesel engines are of course most illuminating and most relevant. For, even given the facts that the ratios of the patent had been used in gasoline engines and the combustion system of the patented engines had been commonly used in diesel engines, Cummins could argue that the engines described by the patent were so different from prior art open-chamber diesel engines that this in itself shows that there was nothing obvious in what Reiners did. An examination of the prior art, however, negates this argument.
(a) The Cummins Vera Engine.
The Vera engine, admittedly part of the prior art,
The Vera engine has a rated speed of 2500 rpm and a specific weight of 8.4 lb/hp.
Cummins insists that the performance of the Vera was "disappointing" from a commercial point of view because it was too big, too heavy and too expensive for use in on-highway trucks.
It is true that, apart from this streamlining procedure, the decrease in the ratios of the patent accounted for much of the weight differential between the Vera and the patented Vine. Reiners estimated that at least 550 pounds of the 860 pound differential could be so accounted.
Cummins argues that even small gains in lightweightness and compactness are commercially important. This is, of course, true. But it does not follow from that assertion that the design improvements that produced those gains are patentable. The diesel engine has for a long period been subjected to various design improvements which have decreased its specific weight and size. This trend has been notable even in engines where the stroke-to-bore ratio is held above 1.2.
(b) The Ford 172D Engine.
The Ford 172D tractor engine is also admitted to be part of the prior art. Both its connecting-rod-to-bore and deck-height-to-bore ratios fall within patent claims. However, this engine has a bore of 3.9" and a stroke-to-bore ratio of 0.92. These parameters are slightly outside the minimum bore of 4" and the maximum stroke-to-bore ratio of 0.9.
For the same reasons as discussed in considering the Vera, this Court finds that the difference between the stroke-to-bore ratio of the Ford 172D and of the patent claims is insignificant in the operation of the engine. Further, the combustion system of the Ford is, like the patented engines and the Vera, based on a Mexican Hat, or Hesselman, design. The chamber used in the Ford is, however, relatively narrower than that used in the Vine and Vera, and the injector pressure is correspondingly lower. (In this respect, the combustion design is more nearly equal to the accused Toro-Flow engines (see Figure 5).) These are two alternatives that a designer can use as a matter of choice.
The Ford engine has a rated power output of 59 hp and a rated speed of 2400 rpm. At rated speed and power, its brake specific fuel consumption is rated at 0.460 lb/hp/hr.
In the text of the Reiners patent, "the minimum practical limit for the cylinder [diameter]" is described as "about four inches." The bore of the Ford 172D (3.9") is about four inches.
(c) The Briling Articles.
Between 1955 and 1960, N. R. Briling, a member of the Soviet Academy of Sciences, wrote six articles on the short-stroke diesel engine which are part of the prior art.
Stroke Bore s/b TypeDB43 3.61" 4.25" 0.85 In-line, 4 cyl. DB64 3.61" 4.25" 0.85 In-line, 6 cyl. DB67 4.33" 4.91" 0.88 V, 6 cyl. DKS 4.33" 4.91" 0.88 Opposed DB69 4.33" 4.91" 0.88 V, 6 cyl.
All of the Briling articles were published in England and in the United States. The articles were available to the industry, more than one year before Reiners applied for the patent in suit, in the technical libraries of Harvard University, the Library of Congress, the Pentagon, the British Museum Library, the University of California, and the Battelle Memorial Institute.
No evidence was introduced (apart from the articles themselves) that any of those engines were in fact built and operated.
The Briling articles give an extensive theoretical analysis of the operation of the short-stroke diesel. Briling traced the trend of gasoline engines to a shortstroke construction with decreases in the length of the connecting rod, the deck height, and specific weight, and remarked that diesel design follows the gasoline experience. Each of the five objects or advantages stated in the Reiners patent is asserted and discussed by Briling. In addition, Briling described with much greater detail than Reiners the combustion problem and the techniques that can be used to overcome it. A mathematical solution is attempted to the difficult problem of heat rejection. Briling ventured here into a highly controversial field.
In one of his 1956 articles,
The figures reported by Briling for the tested specific weight and fuel consumption of his engines were not as good as he had predicted theoretically.
The Briling articles give specific values of the stroke, bore and stroke-to-bore ratio of each engine. They do not, however, disclose either the connecting rod length or the deck height. Nor do they state specific values for the ratios of those figures to the engine bore.
The experts Flynn and Shreeve scaled Figures 12 and 13 of a printed copy of the article DX76 in the Library of Congress and obtained values of the connecting-rod-to-bore and deck-height-to-bore ratios for the DB43 engine within the claims of the patent. The accuracy of those drawings has not, however, been established by the defendants. The photocopies of those drawings were shown to be distorted and inaccurate and Flynn's measurements of the copy in the Library of Congress, which were limited to the dimensions necessary to obtain the ratios in the patent, showed only that the second generation copy was distorted with respect to the first.
Briling did not state what L/R ratio was used in any of his engines. Using an L/R ratio of 3.8, which Ricardo recommended as the upper limit for six-cylinder undersquare engines, Flynn computed the connecting-rod-to-bore ratio for the DB43 to be 1.61. Using an L/R figure of 4.0, which was the upper limit of diesel engine design practice,
All the elements of the Reiners claims except the connecting-rod-to-bore and deck-height-to-bore ratios are disclosed in the text of the Briling articles. Since, as a matter of accepted diesel engine design practice, the length of the connecting rod and the deck height are made as short as possible, with an L/R ratio of 4.0 or less, a person skilled in the art would have, by employing standard design procedures, built an engine within all the parameters of the Reiners claims from the information disclosed by Briling.
(d) Other Publications (all British).
Four technical articles published between 1955 and 1957 describe a VD8-603 Continental engine. This engine has a V design, with a stroke of 4¼", a bore of 4¾", and a stroke-to-bore ratio of 0.89. It employs a Lanova combustion chamber, which is a type of divided or precombustion chamber.
The Thaheld engine was disclosed in three 1946 publications as a short-stroke diesel engine with a type of precombustion chamber called an "air cell." This engine had a bore of 4 7/8 ", a stroke of 3 7/8 " and a stroke-to-bore ration of 0.8. It was reportedly used to power aircraft.
Both the Continental VD8-603 and the Thaheld engines clearly fall outside the claims of the patent inasmuch as they employed a precombustion chamber. However, they are still relevant to show that the prior art diesel engine technology had disclosed engines with a stroke-to-bore ratio of less than 0.9.
The Tilling-Stevens "pancake" diesel engine is disclosed in two articles of 1937 and 1938. This engine is described as a horizontally opposed direct ignition engine of the open-chamber type. The stated values of stroke, bore and connecting rod length yield stroke-to-bore and connecting-rod-to-bore ratios within the claims of the patent. No independent evidence was offered that this engine ever went into operation. Neither plaintiff's nor defendants' witnesses could tell whether the pictures in the articles were of actual engines or simply wooden mock-ups for a trade show.
A 1951 article appearing in "Oil Engine" and written by an author using the pseudonym of "Midlander" analyzes the advantages and disadvantages of reducing the stroke-to-bore ratio.
D. The Accused "Toro-Flow" Engines.
1. Comparison with Patent Claims.
The accused Toro-Flow engines are identified as Models D351, D478, DH478, D637 and DH637. The D351, D478 and DH478 models are V-6 engines rated at 130, 150 and 170 hp, respectively; the D637 and DH637 models are V-8 engines of 195 and 220 hp.
The D351 engine has a stroke of 3.58 inches and a bore of 4.56 inches, yielding a stroke-to-bore ratio of 0.79. That engine has a connecting rod length of 7.188
All of the other models have 3.86 inch strokes and 5.125 inch bores, yielding a stroke-to-bore ratio of 0.75. The connecting rod lengths and deck heights are the same as for the D351 engines but because of the larger bore, these models have connecting-rod-to-bore ratios of 1.40 and deck-height-to-bore ratios of 2.26.
The parameters of each of these Toro-Flow models thus fall within the claims of the patent. The injectors are located 0.47 inches off the longitudinal center-line of the cylinders; this is substantially on the axis of each cylinder, as specified in the claims. In addition, every other element of the claims is present in each model of the accused engines. The claims in issue therefore read on the accused engines.
2. Design and Development.
From 1953 through 1960, General Motors worked on the design of five different short-stroke diesel engines. In each case, General Motors attempted to convert an existing gasoline engine into a diesel engine so as to use as many gasoline engine parts as possible from common machine tooling. Two studies were terminated at the paper design stage; in the other three projects, engines were built and tested but never went into production.
Each of those studies involved engines with stroke-to-bore ratios of less than 0.9.
Engineers at General Motors were quite impressed by the operating characteristics of the patented Cummins Vim/Vine engines. A Vim engine was purchased and then studied and tested. Beginning in September of 1961, General Motors directed its efforts to dieselizing the GMC-478 gasoline engine; again a principal objective was to retain as many common parts as possible (although in the end no major part of the gasoline engine could be used in the Toro-Flow). This project was given high priority and several million dollars was allocated to it.
Apart from the design of the combustion system, the differences in construction between the Toro-Flow and the patented Vim are insignificant.
E. Commercial Success.
The patented engines are purchased from Cummins by all major truck manufacturers except General Motors. These engines are commercially attractive to truckers because of their reduced weight as compared to conventional in-line engines.
The sales figures to date are inconclusive as an indicator of commercial success. Between 1961 and 1965, the patented engines accounted, on the average, for only six percent of the total number of open-chamber diesel engines sold by Cummins. The Val/Vale models first hit the market in volume in 1966, but in the 1966-67 period, only about five percent of Cummins' sales were of the patented engines.
The response of experts in the field to both the patented engines and the Toro-Flow has been rather muted. Aside from the expectable puffing with which Cummins introduced the Vim/Vine and General Motors the Toro-Flow, this record contains only reports that one or two experts said they were particularly impressed.
The threshold question before this Court in determining whether the defendants have met their burden of establishing the invalidity of the patent is: What did Reiners invent? He most certainly did not invent the short-stroke internal combustion engine. The historical trend of gasoline engine technology was towards short strokes, and gasoline engines with stroke-to-bore ratios well below 0.9 were in widespread commercial use before 1960. And those gasoline engines employed connecting-rod-to-bore and deck-height-to-bore ratios below the values of 1.75 and 2.8. The patent claims, of course, are directed to a certain type of internal combustion engine—the open-chamber diesel engine.
The plaintiff seeks to avoid the two horns of this dilemma (i. e., the prior art, on the one hand, and the lack of any new departure on the other hand) by emphasizing the uniqueness of the three parameters of the claims working together. Of course, they worked equally well, and in conjunction, in the prior art gasoline engines, yielding exactly the same benefits. In the prior art diesel engine technology itself, the difference between the parameters of the claims and the parameters of either the prior art Vera or the prior art Ford 172D engine is insignificant. In addition, there were a number of prior art diesel engines on the market with stroke-to-bore ratios between 0.9 and 1.0.
It is the claims—not the drawings or the patented engine—that define the scope of the patent, Wayne Knitting Mills v. Russell Hosiery, Inc., 400 F.2d 964 (1968), and the claims are measured against the prior art. This Court has found that:
Given these findings of fact, this Court holds as a matter of law that the subject matter of the patent was obvious against the background of either the Vera or the Ford 172D. 35 U.S.C. § 103; Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Heyl & Patterson, Inc. v. McDowell Co., 317 F.2d 719 (4th Cir. 1963); Triumph Hosiery Mills, Inc. v. Alamance Industries,
There is, of course, a presumption of validity set forth in 35 U.S.C. § 282. But where, as here, the Patent Examiner did not cite the most relevant prior art, that presumption is at the very least weakened. Blumcraft of Pittsburg v. Citizens of Southern National Bank, 407 F.2d 557 (4th Cir. 1969); See Heyl & Patterson, Inc. v. McDowell Co., 317 F.2d 719, 722 (4th Cir. 1963). Here, as in Blumcraft, "[t]he prima-facie presumption of a patent's validity [35 U.S.C. § 282] can be given little weight." Further, the obviousness of the patent is clearly established by the evidence and would in any case overcome that presumption.
The plaintiff has focused much of his argument with respect to defendants' section 103 defense on the "longfelt need" of the industry for the invention, the industry's response to it, General Motors' own unsuccessful history in the field, commercial success, etc. These factors are what the Supreme Court has called "subtests" of patentability. It is true that they are relevant to the issue of patentability and, in close cases, can be of persuasive effect. United States v. Adams, 383 U.S. 39, 51, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966) (operating advantages); Otto v. Koppers Co., 246 F.2d 789, 799 (4th Cir. 1957) (commercial success); Colgate-Palmolive Co. v. Carter Products, 230 F.2d 855, 860-862 (4th Cir. 1956) (lack of success by others over a lengthy period, plus hard to come by). But where, as here, the facts establish convincingly that the invention was obvious against the background of the relevant prior art, secondary tests cannot be controlling. Graham v. John Deere Co., supra; Great A & P Tea Co. v. Supermarket Equipment Co., supra; De Forest Radio Co. v. General Electric Co., 283 U.S. 664, 51 S.Ct. 563, 75 L.Ed. 1339 (1931). In any event, the facts in this case, when applied to the secondary tests of patentability, do not establish an innovative quality to the Reiners patent. The commercial success of the patented engines has not been at any point in time outstanding. Although General Motors had unsuccessfully attempted to construct a commercially acceptable shortstroke diesel engine, in none of their projects was there a comparable effort in priority or man-hours of either the patented engines or the Toro-Flow. Also, the prior art diesel technical literature contained several articles which weighed the advantages and disadvantages of going oversquare, but none of those articles expressed any long-felt need. Nor did many experts in the field give widespread acclaim to Reiners' achievements; and, while one or two experts said that they were impressed by the patented engines being able to operate so well at a stroke-to-bore ratio of 0.75—which, it should be noted again, was well below the upper ratio of the claims of the patent—there was a notorious silence on the significance of the three ratios acting in combination. Compare Power Curbers, Inc. v. E. D. Etnyre & Co., 298 F.2d 484, 493 (4th Cir. 1962).
2. Other Statutory Defenses.
In order for a patent to be valid, the invention must satisfy each of the separate statutory requirements of utility, novelty and non-obviousness under 35 U.S.C. §§ 101-03; and the patent specification and claims, pursuant to 35 U.S.C. § 112, must clearly define and point out, show how to construct, and state the best mode for reducing to practice,
Insofar as the section 101 test is concerned, the utility of the engines made under the Reiners patent has not been seriously disputed by the defendants and is clearly demonstrated by the manufacture, use and sale of the patented engines, as well as of the accused engines. Of course, courts do not try to quantify degrees or measures of utility; it is enough to say that the patented engines have shown themselves to be at least partially capable of accomplishing their claimed functions. 1 Walker on Patents, supra at 492-504.
With regard to the section 112 test of definition, this Court has no difficulty in concluding that the patent claims clearly define and point out the asserted invention. The use of parameters with "non-critical" upper limits, but with no floor, is common to many patents in the internal combustion field issued by the Patent Office (supra at 77). Further, the open-endedness of the form has not in and of itself seemingly been held fatal by the courts in considering patents in other areas. See, e. g., Lever Bros. Co. v. Proctor & Gamble Mfg. Co., 139 F.2d 633 (4th Cir. 1943); E. I. DuPont DeNemours & Co. v. Glidden Co., 67 F.2d 392 (2d Cir. 1933). Nor is the presence of a "critical" limit required. See, e. g., Mineral Separation v. Hyde, 242 U.S. 261, 37 S.Ct. 82, 61 L.Ed. 286 (1917); Sun Ray Gas Corp. v. Bellows-Claude Neon Co., 49 F.2d 886 (6th Cir. 1931).
The specification, accompanied by the drawings, essentially told prospective designers that the basic prior art Hesselman system adequately solved the combustion problem of the short-stroke diesel. This satisfies the section 112 requirement that "the best mode contemplated by the inventor for carrying out his invention" be set forth. A more troublesome question is whether enough information was revealed to meet the section 112 requirement of teaching one skilled in the art how to reduce the patent to practice. It is, of course, not necessary for the patentee to have predicted and described every possible variation. See McCullough Tool Co. v. Well Survey, Inc., 343 F.2d 381, 395 (10th Cir. 1965), cert. denied, 383 U.S. 933, 86 S.Ct. 1061, 15 L.Ed.2d 851 (1966). But where, as here, the patentee has singled out a particular problem as being the sole reason for the unsatisfactory results of previous commercial activity in a particular field, he should be held to the duty of providing a specific, informative solution to that problem. The Reiners patent, while highlighting the necessity of overcoming the combustion problem in short-stroke design, seemingly goes no further than to illustrate the well known Hesselman chamber. The prospective designer of a short-stroke engine is still obliged to use his own resources and skill and to engage in very extensive experimentation in order to solve the combustion problem. The only method by which any working parameters can be derived from the patent is to scale the accompanying drawings, but patent drawings are not meant for that purpose, although they are often helpful in illustrating the principles of the patent. Otto v. Koppers Co., 246 F.2d 789, 797 (4th Cir. 1957). And even if it were sufficient to leave it up to others to scale the drawings, the prospective designer is only given a starting point. He would still know nothing about injector location, pressure, etc.; nor would he have knowledge of swirl and swish effects. Indeed, it is pertinent to recall that General Motors invested a huge amount of time to solving the Toro-Flow's combustion problem. On balance,
There remains for consideration the statutory test under section 102 requiring novelty. At issue is whether the Briling articles anticipate the patent. Section 102 provides:
This statute on its face draws no distinction between a prior article published in the United States or in a foreign country. Cummins urges, however, that the degree of specificity required for anticipation should be greater for a foreign publication, and there are cases which have so held. See Baldwin-Southwark Corp. v. Coe, 76 U.S. App.D.C. 412, 133 F.2d 359, 365-66 (1942), and cases cited therein. On the other hand, in other cases there is no discussion of any such distinction. Marconi Wireless Telegraph Co. of America v. United States, 320 U.S. 1, 55-57, 63 S.Ct. 1393, 87 L.Ed. 1731 (1943); Dymo Industries v. Com-Tech, 391 F.2d 335 (9th Cir. 1968). When one is faced with a single article from an obscure foreign journal, which may be for practical purposes inaccessible in the United States, it would not appear to serve any purpose of the patent laws to accord it the same weight as an article which is reasonably available to the industry. But that reasoning hardly extends to six articles of a reputable scientist which were published in Soviet technical journals, all within six years of the date of the patent application, and all available in numerous American and British technical libraries. Because the Briling articles were reasonably accessible to the industry, this Court believes that it is proper to apply the same test of anticipation as in connection with any ordinary American publication. That test is that in order to defeat a patent, the prior publication must exhibit a substantial representation of the invention in such full, clear and exact terms that one skilled in the art may make, construct and practice the invention without having to depend on either the patent or on his own inventive skills. Seymour v. Osborne, 78 U.S. 516, 555, 20 L.Ed. 33 (1870), which itself involved a foreign publication; Rich Products Corp. v. Mitchell Foods, Inc., 357 F.2d 176, 180 (2d Cir. 1966), cert. denied, 385 U.S. 821, 87 S.Ct. 46, 17 L.Ed.2d 58 (1966); Bros Inc. v. W. E. Grace Mfg. Co., 351 F.2d 208, 212-213 (5th Cir. 1965), cert. denied, 383 U.S. 936, 86 S.Ct. 1065, 15 L.Ed.2d 852 (1966); Ballantyne Instruments & Electronics, Inc. v. Wagner, 345 F.2d 671, 673-674 (6th Cir. 1965). This Court's detailed findings of fact, supra at 83-85, compel the legal conclusion that this test is met by the Briling articles. By employing standard design practice, a person skilled in the art would have, from the information given by Briling, constructed an engine reading exactly on the claims of the Reiners patent. Considerably more information, particularly with regard to the design of the combustion system, is disclosed in those articles than in the Reiners patent. The Reiners patent therefore fails for want of novelty as well as for the other reasons stated in this opinion.
The finding of invalidity of the patents in suit controls the legal determination of this case. It has been suggested, however, that it is preferable procedure to assume validity and decide the question of infringement. Mabs, Inc. v. Piedmont Shirt Co., 368 F.2d 570 (4th Cir. 1966); Triumph Hosiery Mills, Inc. v. Alamance Industries, Inc., supra at 795. The claims of the patent
In addition to the independent experts, Rosen and Shreeve, employees of each party testified as experts—Mr. Reiners for Cummins and Mr. G. Flynn for General Motors. Both of these gentlemen have a great deal of experience in the field of diesel engine design and development and their testimony was most helpful to the Court. Finally, skilled counsel patiently labored to reduce complicated questions to the fullest extent possible and to translate the language of a technical field into more ordinary English.