
    COLUMBIA BROADCASTING SYSTEM, INC., Plaintiff, v. ZENITH RADIO CORPORATION and The Rauland Corporation, Defendants.
    No. 71 C 687.
    United States District Court, N. D. Illinois, E. D.
    March 17, 1975.
    As Amended March 18, 1975.
    See also, Jud.Pan.Mult.Lit., 329 F.Supp. 540.
    
      Herbert P. Kenway, and George W. Crowley, William A. Van Brunt, Kenway & Jenney, Boston, Mass., James R. Sweeney, Coffee & Sweeney, Chicago, 111., for plaintiff.
    Dugald S. McDougall, Francis W. Crotty, Chicago, 111., for defendants.
   MEMORANDUM OPINION AND ORDER

McLAREN, District Judge.

I.

INTRODUCTION

This matter arose as an action by Columbia Broadcasting System, Inc. (CB,S) for infringement of U.S. Letters Patent No. 2,690,518 (hereinafter referred to as the ’518 patent or the Fyler and Rowe patent) and infringement of U.S. Letters Patent Nos. 3,179,836 and 3,222,172 (hereinafter referred to as the Giuffrida patents). The Court has examined all of the testimony and exhibits presented, and being fully advised of the premises, finds that the Fyler and Rowe patent and Giuffrida patent 3,179,836 are valid and infringed by the Zenith Radio Corporation’s (Zenith) devices. The following shall constitute the Court’s findings of fact and conclusions of law pursuant to F.R.Civ.P. 52(a).

II.

HISTORICAL BACKGROUND

The instant litigation involves three patents whose subject matter is used in color TV picture tubes. To understand the purpose of the patents in suit and their place in the color TV industry, a brief excursion into the development and history of color TV is necessary.

Public broadcasting of television, as of radio, is lawful only when carried on under license of the Federal Communications Commission and in accordance with its prescribed “standards.” Those standards result in a single uniform type of electrical signal for each broadcasting service which home receivers are designed to receive. Prior to 1949, the FCC had adopted no standards for color television. In that year, however, the FCC invited industry proposals directed to the etablishment of such standards. An acceptable color television system requires complementary components among which are the viewing camera, the transmitter circuitry, the receiver circuitry and the picture tube at the receiving end.

CBS and RCA were early proponents of color TV systems, which were demonstrated to the FCC in November 1949 along with others. The CBS system, a “field sequential” system, was adopted by the FCC as the national standard in November 1950 and remained the national standard until December 1953. This system produced an acceptable color picture by placing a spinning disc in front of a monochrome tube. The spinning wheel system, however, was not compatible with several million existing, convential black and white receivers. Thus, research continued with an eye to development of a color TV tube which would receive conventional black and white programs as well as color programs.

After an extensive research program, RCA finally developed a single picture tube all-electronic color TV receiver. Thousands of phosphor dots in trios of red, green and blue were deposited upon a flat glass plate to form the screen. Three electron guns grouped at slight angles to each other at one end of the tube each produced a beam of electrons to excite phosphors of a given color emanation. To assure that electrons from the “red gun” struck only “red” phosphors, those from the “green gun” struck only “green” phosphors and those from the “blue gun” struck only “blue” phosphors, a thin flat metal sheet having a single perforation for each trio of phosphor dots was interposed between the guns and the phosphor dots. That perforated sheet was called a “shadow mask” because the areas between perforations “shadowed” or shielded all of the phosphor dots of two of the colors from the beam from any gun. The mask and the phosphor dot screen were parallel to each other. In other words, the goal of the red beam striking only red dots, the green beam striking only green dots and the blue beam striking only blue dots was achieved because each beam came through the mask apertures at an angle which permitted it to strike only its associated phosphor dots. This system became the accepted FCC color TV standard in December 1953.

The RCA tube, while commercially acceptable, was not perfect. The major problem with the tube was keeping the shadow mask aligned with the phosphor dot screen. Eighty-five per cent of the electrons emitted by the electron guns hit the metal sheet; only 15% passed through the apertures and hit the screen. The electrons that hit the metal mask heated the mask and caused it to expand. When the mask expanded, the apertures moved, causing the various electron beams to hit the wrong phosphor dots (misregistry). This substantially decreased color fidelity. RCA solved this problem by preheating the mask to operating temperatures and tightly clamping it into a rigid metal frame. When the mask then cooled, it was unable to move and, assuming it was properly aligned in the first instance, the mask was thus in proper alignment when operating during the warm-up cycle as well as when operating at rated temperatures.

The above-described solution to the shadow mask alignment problem created difficulties both for the viewer and the manufacturer. Operating the drumhead tube at levels of brightness suitable for viewing in a normally lighted room required the intensity of the electron beams to reach levels so high that the mask was heated above the temperature at which it was tensioned. When such levels were reached, warping occurred and, once again, color fidelity was lost. Even a bright area in a picture being presented could cause localized heating in the mask and resulting areas of color smearing. Moreover, the drumhead tube created a small picture (the RCA commercial tube had a 15 inch viewing screen) for a relatively large tube envelope.

From the standpoint of the manufacturer the tube was unsatisfactory because the heavy internal assembly, or “color sandwich” had to be heated to a high temperature to drive out occluded gases as the necessary vacuum was being drawn within the tube. There was also the added cost of equipment and labor involved in the operation of heating and clamping the mask in its frame.

In the early 1950’s other electronics manufacturers continued experiments to attempt to develop solutions to the picture tube problem. For example, Philco was hard at work developing its code named “Apple” tube which operated on entirely different principles and did not employ a shadow mask at all although the picture was displayed on the face plate of the tube. Another type was the so-called “Lawrence” tube in which the electron beam or beams passed through a grid of parallel wires to be deflected in required directions by circuits which varied the voltage between the grid and the phosphor screen. The Apple and Lawrence tubes never became commercial, and there were also other experimental types which fell by the wayside.

III.

THE FYLER AND ROWE SOLUTION

This historical background describes the state of the art in 1953 when CBS developed the tube which embodies the '518 patent in suit. Color fidelity in TV tubes had been a long standing problem in the industry which many major corporations and scientists had attempted to solve. Until the Fyler and Rowe invention, no solution had been entirely satisfactory. The RCA drumhead tube solution had been advanced to the stage of commercial development but consumer dissatisfaction and manufacturing difficulties limited the market for this type of tube.

The Fyler and Rowe solution to the color fidelity problem abandoned the RCA approach. Fyler and Rowe conceived of a tube with a curved spherical shadow mask free from lateral tension matched with a curved spherical viewing screen with phosphor dot trios placed on the inside of the viewing screen. Such a system has two major beneficial features: (1) when heated, the mask expands radially (along its axis) and radial expansion does not cause the apertures to become misaligned with the phosphor dot trios as would lateral expansion (thus color purity is maintained); and (2) since the mask is not under lateral tension requiring a clamp and the phosphor dots are directly on the face plate the tube has fewer surfaces to trap gas, thus the production heating cycle to drive out occluded gases is substantially shorter. This obviously reduces manufacturing costs.

Zenith maintains that this Court cannot consider the disclosure of the ’518 patent on axial expansion of the mask because explanation of that feature was a “new matter” added by amendment. The patent laws do not allow disclosure of new matter by amendment. In the instant case, however, this principle is inapplicable because CBS in its original disclosure did discuss the thermal properties of the mask. The file wrapper of the ’518 patent shows the original '518 patent application included this statement: “such expansion as may be encountered is taken up over the entire surface (of the mask) resulting in negligible amplitude displacement.” This language, although somewhat inartful, clearly shows that CBS disclosed the thermal properties of the mask from the beginning.

A. The Weight to be Accorded the Previous Finding of Validity

A threshold issue is how much weight is to be accorded to the finding of validity of the ’518 patent by the Massachusetts district court and the First Circuit. Due process prohibits technically estopping Zenith from challenging validity despite the existence of an adjudication on the identical issue which squarely stands against its position. Blonder-Tongue Labs., Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971); Hansberry v. Lee, 311 U.S. 32, 61 S.Ct. 115, 85 L.Ed. 22 (1940); Bernhard v. Bank of America Nat. Trust & Sav. Ass'n, 19 Cal.2d 807, 122 P.2d 892 (1942). One cannot be bound by a judgment in personam in a litigation in which he is not designated as a party or to which he has not been made a party through service, substituted service or the class action mechanism. Cf. Pennoyer v. Neff, 95 U.S. 714, 24 L.Ed. 565 (1877).

This does not mean, however, that a prior adjudication of validity should be given no weight. Federal courts have consistently held that a prior finding of validity against a different defendant is entitled to comity and therefore the usual presumption of validity attaching to a patent is in such instances increased. See e. g., General Tire & Rubber Co. v. Firestone Tire & Rubber Co., 489 F.2d 1105 (6th Cir. 1973), cert. den., 417 U.S. 932, 94 S.Ct. 2643, 41 L.Ed.2d 235 (1974); Safe Flight Instrument Corp. v. McDonnell-Douglas Corp., 482 F.2d 1086 (9th Cir. 1973).

The policy reasons behind the Blonder-Tongue decision also indicate that prior adjudications of validity are to be accorded great weight. In Blonder-Tongue, the Supreme Court held that a patentee is estopped to assert the validity of a patent that has been declared invalid in a prior suit against a different defendant unless the patentee demonstrates that he, substantively and evidentially, did not have a full and fair opportunity to litigate the validity of his patent in the prior suit. At the foundation of the Court’s decision was the recognition that patent litigation is very costly to the litigants and time-consuming for the federal courts. The Court also noted that a patent by its very nature is affected with a public interest. To encourage scientific development and promotion of the useful arts, holders of valid patents should be justly compensated. Holders of patents previously found invalid, on the other hand, should not be able, through the coercive effect of forcing a defendant to expend funds on defense of an infringement suit, to accept license agreements on an invalid patent. Moreover, inconsistent judgments on the validity of a patent can disrupt the competitive mechanisms of the marketplace because price differentials will develop between those manufacturers who must pay royalties to the patentee and those manufacturers who need not make such payments.

With these policy considerations in mind, this Court believes that a prior finding of validity should be given as much weight as possible consistent with the dictates of due process. Without violating due process, a court can require a defendant to prove that a factual or legal error occurred in the previous adjudication of validity or that the previous litigation was incomplete in some material aspect. This proof could consist of evidence that the defendant in the first litigation failed to bring to the first court’s attention relevant prior art or that the first court did not adequately apply the standards of 35 U.S.C. § 103 as articulated by Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966). If defendant could not come forward with any such evidence, summary judgment under F.R. Civ.P. 56 might well be appropriate. Once the defendant had come forward with additional relevant prior art or other additional data tending to invalidate the patent, summary judgment would no longer be appropriate, the prior adjudication of validity would still be entitled to substantial weight but could not be determinative. Of course, the more new evidence defendant produces, the less weight the initial finding of validity is to be accorded.

In the instant case, Zenith introduced relevant evidence not considered by the previous courts in their adjudications of validity. Thus, under the present circumstances the traditional application of the comity doctrine and the more expanded notions of the comity doctrine expressed herein reach the same result— the prior adjudication of validity cannot be determinative but is only entitled to substantial weight as evidence of validity.

B. Obviousness

Under 35 U.S.C. § 103 an invention is unpatentable if at the time of the development the invention was obvious to one skilled in the art. To test whether an invention is obvious, “the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved . . . ” Graham v. John Deere, 383 U.S. at 17, 86 S.Ct. at 694. Additionally, “[s]uch secondary considerations as commercial success, long-felt but unsolved needs, failures of others, etc. might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.” Id.

Much of the prior art Zenith relies on was also introduced by Sylvania in the first litigation. The first piece of such prior art is an article written in July 1952 by Sam H. Kaplan entitled “Theory of Parallax Barriers,” appearing in the Journal of the Society of Motion Picture and Television Engineers. Kaplan was an employee of Zenith at that time working under Dr. Constantine Szegho, Zenith’s principal expert witness in the instant litigation. The Kaplan article discusses the geometry of parallax barriers (shadow masks), including spherical barriers coupled with spherical screens. The Massachusetts court and the First Circuit, however, dismissed the Kaplan article as the “exegesis of geometric theory” (411 F.2d at 725 n.9), teaching nothing about the problems inherent in a practical application to color TV picture tubes. This Court agrees. Obviously, the article was available to those skilled in the art (TV engineers) but not one company, including Zenith, acted to build a curved shadow mask-curved screen tube until CBS demonstrated that such a tube was feasible. The reason for this is obvious. At the time the Kaplan article was published, no one in the industry thought a shadow mask free from lateral tension was feasible. Without such a mask, the Kaplan theory was unworkable. Fyler and Rowe taught the industry that such a mask, if spherical, was feasible because movement upon heating would be radial, not causing loss of color fidelity. Nothing in the Kaplan paper suggests this core concept of the ’518 patent.

Additionally, although not cited in the ’518 patent, the Kaplan article was specifically called to the attention of the Patent Examiner before the ’518 patent issued. As stipulated, Zenith, on behalf of Kaplan, filed an application on the combination of a cylindrical shadow mask with a phosphor screen deposited on a cylindrical face plate. The Examiner suggested to Zenith that Zenith copy two of the Fyler and Rowe claims so that an interference might be set up to determine priority of inventorship. Rather than engage in such an interference, Zenith responded by citing the Kaplan paper in support of its contention that the proposed interference claims were not patentable.

Nevertheless, the Fyler and Rowe patent was issued, and the Patent Examiner presumably also thought the Kaplan article was nothing more than geometric theory. This judgment further strengthens the Court’s view that the Kaplan article does not make the Fyler and Rowe patent obvious, even considering the high standards of those skilled in the art.

Zenith also relies heavily on an article in the French magazine Nature not cited in the Patent Office, known to the Patent Office, or cited in the Sylvania litigation. Two drawings in this 1951 article show a color TV tube with a curved mask and a curved phosphor screen on the face plate. Interestingly enough, however, the captions beneath both of those figures refer to RCA tubes. In 1951 when the French article was published, RCA tuhps were then of the drum-head type. Additionally, the article which is of the popular, non-scientific type, says nothing whatsoever about the response of a shadow mask to electron bombardment. It doesn’t even state that the mask is bombarded or that it heats up. The article thus was nothing more than a general survey of various systems of color television purportedly as practiced in 1951. In the absence of any evidence that the Nature article taught anyone in the industry anything about the solution to an extremely difficult technical problem, this Court believes that the unexplained, misdesignated representation of a curved screen and mask did not aid those skilled in the art in producing such a tube.

Other prior art patents cited by Zenith do not constitute relevant prior art which would make the ’518 patent obvious. These patents, the Bramley patent (U.S. Letters Patent 2,606,303), the Lawrence patent (U.S. Letters Patent 2,692,532), and the Okolicsanyi patent (Reissue Patent 23,672) do not contain any discussion of the thermal response or stability of a curved or spherical shadow mask. Moreover, these patents, unlike Claim 7 of the '518 patent in suit, do not use the shadow mask as a color selection device.

A “shadow mask” is defined in the art as a passive element which determines the color of the picture being presented on the screen by reason of the angle at which the electron beams approach it; in no way does it involve any active elements performing a switching function.

In contrast, Bramley, Lawrence and Okolicsanyi involve a radically different method of color selection. Bramley disclosed a tube where the phosphors were not placed directly upon the surface of the spherical face plate but were placed upon a transparent conducting layer. It was that conducting layer by which selection among the three colored phosphors was effected. The voltage between the conducting layer and a grid was cyclically varied in order to cause the electron beam to deflect from one phosphor color to another. Lawrence and Okolicsanyi employ principles similar to those employed in Bramley. It should also be noted that these three patents were basically paper patents. Apparently, a Bramley-type tube was never successfully built. The Lawrence tube was at best only used experimentally in the laboratory.

In determining obviousness, prior paper patents should be given little weight. Dart Industries v. E. I. DuPont, 348 F.Supp. 1338 (N.D.Ill.1972), rev’d on other grounds, 489 F.2d 1359 (7th Cir. 1973). In sum, the “prior art” Zenith has cited to the Court would not make the Fyler and Rowe invention obvious to one skilled in the art. The prior art cited is not so forceful as to reduce the presumption of validity attaching to any patent much less a patent previously found valid. The defendant therefore has not sustained its burden of proving invalidity for obviousness. 35 U.S.C. § 282.

This finding of non-obviousness is strenghtened by strong secondary evidence of patentability. Virtually all members of the color TV industry except Zenith eventually took licenses for the ’518 patent. RCA, the industry leader, took a license almost immediately upon issue of the ’518 patent. In 1956, Sylvania also took a four-year license which cancelled out royalties CBS had been accruing as a contingency reserve against several court-approved Sylvania patents. Sylvania then balked at renewing its license and CBS brought suit. After the Supreme Court denied certiorari in the Sylvania litigation, CBS accepted settlement in the sum of $2,375,-000. General Electric and Admiral, after the Sylvania litigation, settled suits with CBS for sums of $300,000 and $380,000 respectively. Philco, Westinghouse and Motorola also came to agreements with CBS, Philco paying $180,000, Westinghouse paying $145,000, and Motorola paying $400,000 for licenses. Six Japanese manufacturers also took licenses which paid aggregate royalties of over $3,000,000. The American affiliate of Dutch Philips also took a license which paid CBS over $75,000. Total royalties paid to CBS under the ’518 patent amounted to over $8,100,000. The significant commercial success of CBS’ patent, as noted above, is strong secondary evidence of non-obviousness.

Moreover, the immediate industry reaction to demonstration of the Fyler and Rowe tube also presents strong secondary evidence of non-obviousness. After some initial doubts as to the practicality of the Fyler and Rowe invention (an indicia of non-obviousness), the industry converted to the methods disclosed in the ’518 patent. RCA abandoned the drumhead tube it had laboriously developed. Sylvania and Westinghouse also converted to the ’518 tube. Zenith officials also immediately changed the course of their research and commenced construction of a curved shadow mask-curved screen tube. Thus, CBS has demonstrated that a long-standing need in the marketplace existed for a new type of color TV tube; the Fyler and Rowe invention fulfilled that need and was commercially successful. All of these factors, while not determinative alone, materially enhance the presumption of the validity of the patent.

C. Adequacy of Disclosure Under §112 of Screen Making Methods

Thirty-five U.S.C. § 112 requires that the disclosure of a patent be in such terms that anyone skilled in the art to which the invention pertains can practice the invention. Zenith maintains (as did Sylvania in the prior litigation ^hat the ’518 patent does not disclose the method of placing phosphor dots on a curved screen adequately within the meaning of § 112. The ’518 patent does not describe a method of placing the phosphors on the screen but only states that this task may be accomplished photographically. Zenith argues that if any invention occurred at CBS it related to the method of laying down phosphor dots on a curved surface; once this was accomplished, the Fyler and Rowe invention was a simple piece of non-inventive engineering. This contention is not supported by the record. The CBS method of applying tri-color phosphor dot patterns to curved screens was known to those skilled in the art; as stated above, the Fyler and Rowe contribution to the art involved not the screen but the thermally stable shadow mask.

Developments in 1953 demonstrate that those skilled in the art could read the language of the ’518 patent referring to a photographic process as an adequate disclosure of the method to lay down the screen. Within a few weeks after demonstration of the Fyler and Rowe tube, RCA and Sylvania constructed curved tricolor phosphor dot screens. These companies used the same methods that were involved in the CBS photographic process—mixing photoresist (a photosensitive material) with the phosphor chemicals and exposing by light rays through the shadow mask. Another leader of the TV industry in the early 1950’s, Allan B. DuMont Laboratories, Inc., also had the ability to deposit phosphors on a curved surface. That company asserted prior invention of the spherical mask-spherical screen of the ’518 patent. To implement its assertion, it copied claims from the ’518 patent and provoked an interference. DuMont offered evidence that it, too, had successfully deposited phosphors on a curved surface as early as 1952. The interference was lost by DuMont, but not on the ground that they had failed to deposit phosphors successfully on a curved surface.

Knowledge was also available in widely distributed public sources about photographic methods to make a curved tricolor screen on the inside of the face plate. Dr. H. B. Law, RCA color tube scientist, conceived in 1948, five years prior to the application for the ’518 patent, a photographic process for phosphor deposition and made this comment:

“Such a process would accommodate itself to a curve [sic] faceplate.”

Hi’s concepts were embodied in patent applications filed in 1950 and 1951. The earlier filed application issued as U.S. Patent No. 2,625,734, January 20, 1953, several months prior to the June 1, 1953 filing date of the ’518 application.

At the trial, it was pointed out that Dr. Law disclosed a photographic process for depositing phosphors on either flat or curved surfaces (even though he remained faithful to the RCA tensioned-mask drumhead philosophy). Specifically, the patent states:

“Accordingly, the present invention is concerned with and solves the following problems: (a) The construction of a taut, planar, foraminous mask, (b) The manufacture of a dot-liked, tricolor plane or curved phosphor target for use with said foraminous mask. ...” (Emphasis added)

Another source of public information about the photographic process was the Sylvania scientists’ (Levy and Levine) April 1953 article entitled “The Preparation of Phosphor Screens For Color Television Tubes.” As Dr. Levine testified at trial, the methods described therein were directly applicable to the laying down of the phosphor photo-resist material on a curved as well as a flat surface.

It is also important to note that in the early 1950’s Zenith scientists did not consider the creation of a curved surface phosphor dot array a major problem.

On May 13, 1953, about two weeks before CBS filed its application for the '518 patent on its spherical mask-spherical screen tube, Zenith’s Kaplan reported to his superior Dr. Szegho (defendant’s primary expert witness and research director in the 1950’s):

“The photographic method can easily make a spherical phosphor screen.”

Again, Kaplan reported on June 29, 1953 to Dr. Szegho:

“Screen—For simplicity this should be put on the faceplate rather than on a separate glass plate. The photographic process of screen making lends itself to putting the screen on the curved faceplate.”

Dr. Szegho also thought the curved phosphor screen presented no problem. In abandoned U.S. Patent Application No. 446,698 filed July 30, 1954 he stated:

“Because the electron beam paths effectively constitute uninterrupted straight lines, a master pattern for the manufacture of the luminescent target may be produced by exposing a photographically sensitive plate or film through color-selection barrier 43 by means of a source of light located at a position corresponding to the plane of deflection of the tube, the photographic surface being mounted in position corresponding to that of the tube target. This simple technique is a familiar one in the art and represents an effective and economical method of manufacturing master patterns for the production of color television targets.” (Emphasis added)

In another, earlier memorandum Dr. Szegho also cited the Levy and Levine article as describing how to make a curved phosphor dot array. This evidence is more credible than 1974 protestations that screen-making was the single stumbling block to a curved shadow mask tube.

In light of the above, the Court believes that CBS disclosed all that was necessary about screen making in the ’518 patent. The phrase “photographic process” was industry shorthand for a well-known process, a process which only became important when Fyler and Rowe demonstrated that a curved mask free from lateral tension could be coupled effectively with a curved screen because the mask remained in registry when heated. In making this holding, the Court is mindful of the compelling nature of § 112 which states that the monopoly grant is a quid pro quo for full disclosure. National Carbon Co. v. Western Shade Cloth Co., 93 F.2d 94 (7th Cir. 1939). However, the validity of a patent is not impaired by the fact that experimentation or the exercise of judgment is necessary to obtain the particular results desired. Armstrong v. Motorola, Inc., 374 F.2d 764 (7th Cir. 1967). Section 112 thus embodies a rule of reason. In re Coleman, 472 F.2d 1062 (C.C.P.A. 1972). Shorthand descriptions, if understandable by those skilled in the art, are acceptable under this rule of reason. The ’518 patent contained an acceptable shorthand statement which would enable anyone skilled in the art of tube making to practice the Fyler and Rowe invention.

D. Zenith’s Best Mode Defense

Section 112 of the Patent Statute requires that the specification of a patent application “set forth the best mode contemplated by the inventor of carrying out his invention.” Zenith argues, as did Sylvania in the previous litigation, that CBS violated this command by failing to reveal the best mode of mounting the shadow mask inside the tube. Since the mask must be removed several times during the phosphor screen making process and placed back into the tube with fantastic accuracy, the mask mounting is crucial. Zenith argues that the best mode contemplated for mounting the shadow mask in the CBS tube was the system disclosed in the later Fyler patent 2,961,560. Briefly, that patent contemplated a plurality of knobs formed in the inner wall of the glass tube envelope, best shown at 54 in Figure 3 of the ’560 patent and arranged to cooperate with springs 51 to set the shadow mask 52 in predetermined locations.

Zenith, however, has failed to show that when the ’518 patent was filed the ’560 method was contemplated as best mode of practising the Fyler and Rowe invention. Fyler only suggested the ’560 system to CBS on May 30, 1953. When the ’518 application was filed, the ’560 system remained untested. It was not until some time after August 1953 that CBS received from the Corning Glass Works a model color tube envelope to test the ’560 system. Once these tests were successfully completed, CBS did disclose the best method of mounting the mask by making a new patent application. Obviously § 112 did not require CBS to do more, to disclose a system which at that time was only theoretical. The best mode requirement only requires disclosure of methods the inventor has reduced to practice.

To sum it up, at the time the ’518 patent application was filed there was no “preferred mode” for mounting the mask. The only one tested was disclosed and the ball notch system was disclosed later when it had become established as preferred.

IY.

ENFORCEABILITY OF THE ’518 PATENT

A. Fraud on the Patent Office

Zenith argues that the ’518 patent is unenforceable because CBS practiced fraud on the Patent Office in its prosecution of the ’518 patent application. To prove fraud on the Patent Office, Zenith must establish by clear and convincing evidence that CBS knowingly and wilfully concealed information from the Patent Office, that the information was not known to the Patent Examiner, and that the information concealed was material. See, e. g., Carter-Wallace, Inc. v. Davis-Edwards Corp., 443 F.2d 867, 881-84 (2d Cir. 1971); see also Walker Processing Equip., Inc. v. Food Mach. & Chem. Corp., 382 U.S. 172, 86 S.Ct. 347, 15 L.Ed.2d 247 (1965).

Zenith’s fraud on the Patent Office claim is comprised of two parts: (1) Zenith argues that the CBS patent counsel misrepresented the teachings of the Bramley and Okolicsanyi patents, and (2) CBS concealed from the Patent Examiner the Kaplan paper. Neither of these arguments is tenable. CBS voluntarily brought the Bramley and Okolicsanyi patents to the Examiner’s attention. No misrepresentation occurred in these disclosures. George Crowley, the CBS patent counsel, described these patents in substantially the same terms as did the patent counsel or Patent Examiner involved in procurement of those two patents. With regard to the Kaplan paper it is unclear whether Crowley had knowledge of its existence prior to the issuance of the ’518 patent. This fact becomes unimportant, however, because as previously stated, the Kaplan paper was brought to the attention of the Examiner who obviously did not regard it as effective prior art against the ‘518 patent. Since the article was known to the Examiner and was not material, Zenith’s fraud on the Patent Office claim must fail.

B. Laches

Zenith also contends that the ’518 patent is unenforceable by reason of laches. To prove laches Zenith must show lack of diligence on the part of CBS. Zenith must also prove that it was injured by the delay. Baker Mfg. Co. v. Whitewater Mfg. Co., 430 F.2d 1008 (7th Cir. 1970); Technitrol, Inc. v. Memorex Corp., 376 F.Supp. 828 (N.D.Ill.1974). Zenith started production of color TV picture tubes in late 1962 or early 1963, thus any laches defense must be measured from that time. The chronology of events since 1962 demonstrates that CBS has not been dilatory in enforcing the ’518 patent. Zenith was never allowed to believe that the ’518 patent would not be enforced against it.

CBS began efforts to get Zenith to take a license for use of the ’518 patent in September 1963. Negotiations continued by correspondence throughout 1964 and 1965. In January 1966, as part of the CBS industrywide licensing program, CBS sued Sylvania for infringement of the ’518 patent. This action served notice on the industry that if negotiations were unsuccessful, litigation was likely. Zenith was aware of this lawsuit. Further, in February 1968, CBS sued Lechmere Tire & Sales Company, a retailer of Zenith television receivers. Zenith responded by filing a declaratory judgment action against CBS in New York in March 1968. CBS successfully moved to transfer the case to Boston, causing Zenith to take a voluntary dismissal of its complaint. CBS then brought suit in Boston in April 1970 against Northeastern Distributors, Inc., the exclusive distributor for Zenith in New England. Zenith again refused to defend its customer. CBS finally directly sued Zenith in March 1971.

The Court believes that these facts demonstrate that if this suit was unduly delayed, Zenith was as responsible as CBS. Zenith could have defended its customer in the 1968 action or prosecuted its 1968 declaratory judgment action, these events occurring well within the six year period from when it commenced manufacture of color TV picture tubes. Zenith, however, made a táctieal decision at that point not to litigate in Boston. In light of previous CBS efforts to license the industry, Zenith must live with that decision. Its voluntary dismissal of the 1968 declaratory judgment suit and its refusal to defend its customers in 1968 and 1970 negate any claim of laches.

C. Patent Misuse

Zenith’s third defense against enforceability of the ’518 patent involves the doctrine of patent misuse. Zenith contends that in negotiations with Japanese manufacturers, CBS asserted broad, invalid claims of the ’518 patent. This argument has its genesis in a validity study undertaken by plaintiff’s outside patent counsel. The study concluded that claim 7 of the ’518 patent was valid but that claims 4, 5 and 11 were probably invalid because anticipated by prior art. Zenith thus argues that CBS had a duty to disavow these claims in negotiations with the Japanese.

The facts in this record demonstrate, however, that in negotiations with the Japanese CBS did not rely on invalid claims. At the time the negotiations took place, the Japanese manufacturers produced only tubes with spherically shaped masks and spherically shaped phosphor dot screens. These tubes were clearly covered by claims CBS thought valid. In this context, CBS letters stating that it thought all curved shadow mask color TV tubes infringed its ’518 patent cannot be said to encompass an attempt to broaden the scope of the patent. Additionally, CBS never received any royalties from any Japanese manufacturer for a system which was not spherically shaped, free from lateral tension. It should also be noted that the Japanese manufacturers involved were sophisticated industrial giants, operating world-wide. These companies took licenses only after extended negotiations ultimately involving the Japanese government. Under these circumstances, this Court can only conclude that the Japanese believed with good cause that the ’518 patent was valid and that their tubes infringed it. Zenith has therefore failed to sustain its burden of showing misuse.

V.

INFRINGEMENT OF ’518 PATENT

In adjudging the infringement issue, the Court must examine only claim 7 of the ’518 patent, the only claim involved in CBS’ .accusation of infringement. Claim 7 is set out in Appendix A, below. The parties agree that the key operative language insofar as infringement is concerned is the support means for the mask must be “free of lateral tension” and the mask must be kept “in substantially fixed space relationship” to the phosphors. Zenith argues that its tubes fulfill neither of these requirements of claim 7.

The parties agree as to the legal standards applicable to the infringement inquiry. CBS, the patentee, has the burden of proving infringement. A device infringes a patent if it does the same work in substantially the same way, accomplishing substantially the same result even if the device differs in name, form, or shape. Graver Tank & Mfg. Co. v. Linde Air Prods., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed. 1097 (1949). Moreover, the claims are to be read in light of the specification. United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).

There is no question but that the two types of Zenith tubes in suit here are different than the tube described by Fyler and Rowe. Unlike the Fyler and Rowe tube, the Zenith tubes place the shadow mask in a heavy frame. The Zenith mask frame is attached to a tube envelope with single metal or bi-metal springs. As the Zenith tube heats up, these springs compress and Zenith contends that this feature imparts tension into the system avoiding infringement of the ’518 patent. The springs also cause the frame to move slightly during the operating warm-up cycle; Zenith argues that this means that the mask is not in substantially fixed relationship with the phosphors, also negating infringement. The Court believes that the single metal and bi-metal springs are an improvement over the Fyler and Rowe patent but that Zenith still uses the basic ’518 patent invention as contemplated by Fyler and Rowe. The Zenith tubes operate in the same way and produce the same result taught in the ’518 patent. The addition of another improving element because it does not change the basic conception of the ’518 patent does not negate infringement. King-Seeley Thermos Co. v. Reynolds Prods. Inc., 322 F.Supp. 713 (N.D.Ill.1970). The Court reaches this conclusion based on several factors.

At trial, Zenith’s expert, Joseph Fiore, a leading Zenith tube designer, conceded that both the masks and frames of the Zenith tubes were not under tension. The mounting springs may be under tension but the tube is constructed in such a manner as to isolate this tension from the mask. In any event, the tension created by the springs is not lateral; it is in a plane perpendicular to the lateral plane. The Zenith mask and frame are annealed to relieve stresses created during fabrication. Zenith also deliberately relieves all lateral tension in its mask and the mask supporting rim to avoid misregistry during operational heating. This is basic to claim 7 of the ’518 patent.

Language in Mr. Fiore’s patents confirms this characterization of the Zenith tubes. Fiore patent No. 2,897,392 states that Zenith shadow masks cannot expand peripherally to any great extent and therefore thermal expansion of the mask results primarily in an increase in the curvature of the mask. Such expansion leaves the apertures in relative alignment with the phosphor dots. Another Fiore patent, No. 3,351,996, states that the frame used in Zenith tubes holds the periphery of the mask fixed and thus the thermal expansion of the mask is dome-like but no other significant physical movement occurs to cause misregistry. These two Fiore patents which describe the Zenith tubes obviously use the Fyler and Rowe invention articulated in claim 7 of the '518 patent.

The movement in the frame caused by the springs does not mean that the mask is not in substantially fixed space relationship with the screen. When the bi-metal springs compress during warm-up, the frame moves slightly forward, bringing the mask with it. This movement is not so large as to cause misregistry. The hot bi-metal springs do not impart lateral tension to the mask or its frame. Since the slight movement of the frame forward does not cause misregistry, within the meaning of Fyler and Rowe, a substantially fixed space relationship between mask and phosphors is maintained. CBS therefore has sustained its burden of proving infringement of the '518 patent. Both types of Zenith tubes, single metal and bi-metal spring assembly tubes, operate in the same way and produce the same result as taught in the ’518 patent.

VI.

THE GIUFFRIDA PATENTS

The Problem of Magnetic Deflection and the Giuffrida Solution

The Giuffrida patents also deal with maintaining color fidelity in shadow mask picture tubes. Difficulty had been encountered in production of color tubes because of the vertical component of the earth’s magnetic field. The earth’s magnetic field caused a slight bending of the electron beam to the left from the position of a viewer of the screen, thus the electron beams landed slightly to the left of their respective phosphor dots, degrading color fidelity. This problem was a consequence of the photographic method of screen making. The phosphor dots were produced by shining light beams through the shadow mask. Unlike electron beams, light beams are not affected by magnetic fields. Thus when the light beams expose phosphors, the dots formed are located at the expected points of landing assuming that the electron beams travelled in straight lines. Because of the deflecting of the vertical component of the earth’s magnetic field this assumption was never true.

The Giuffrida patents solve the above stated problem in an elegantly simple manner. Giuffrida determined that shifting either the light source or the screen with respect to the shadow mask prior to photographic exposure of the phosphors in such a direction so that the dots would be formed in a location to compensate for the curvature in a horizontal direction of the electron beams. Prior to Giuffrida, two methods of counteracting the earth’s magnetic field had been attempted. One solution involved placing a counteracting magnetic field around the tube, another method involved shielding the electron beams inside a mu-metal tube envelope. Both of these methods involved considerable additional cost in tube manufacture and did not entirely solve the misregistry problem.

Since at trial Zenith’s expert witness, Fiore, conceded that the round Zenith tubes infringed claim 5 of Giuffrida patent No. 3,179,836, the sole issue remaining open is whether that claim is valid. Zenith!s sole defense as to validity is based on obviousness. Zenith argues that claim 5 of ’836 is made obvious by U.S. Patent No. 2,733,366 (the Grimm patent). The Grimm patent was cited by the Patent Office Examiner in references listed at the end of the ’836 patent. In such an instance the presumption of validity is increased. The Court has examined Grimm and believes that under the Graham v. Deere criteria, Zenith has failed to rebut this presumption of validity. Grimm would not make the ’836 patent obvious to one skilled in the art because it dealt with problems associated with the drumhead tube. The invention apparently was thought by those skilled in the art not to be transferrable to the Fyler and Rowe type tube.

This conclusion is strengthened by the behavior of RCA at the time CBS applied for the Giuffrida patents. RCA vigorously contested CBS’ right to the Giuffrida patents, claiming priority of invention. This was done despite the fact that the Grimm patent had been assigned to RCA. RCA, as a skilled competitor, clearly must have thought that the Giuffrida technique materially enhanced the art to go through the expense of an interference litigation. This again provides secondary evidence that those skilled in the art thought Giuffrida was not obvious in light of Grimm.

VII.

ATTORNEY’S FEES AND TREBLE DAMAGES

CBS maintains that Zenith’s infringement is wilful and wanton, allowing CBS to recover its attorney’s fees and treble damages. 35 U.S.C. § 284. On this issue the burden is not on Zenith to prove exoneration but upon CBS to substantiate the charge. Anderson Co. v. Sears, Roebuck & Co., 265 F.2d 755 (7th Cir. 1959). CBS has not sustained this burden. The Court believes that Zenith corporate officials held a bona fide and reasonable belief that its tubes did not infringe the ’518 patent. Moreover, Zenith presents several bona fide defenses to validity and enforcement requiring a full airing of the facts surrounding the ’518 patent. The Court has rejected these defenses but finds they were made in good faith. In light of this Court’s views as to the weight accorded to prior findings of validity, had Zenith relied only on the evidence and arguments presented in the Sylvania, litigation, treble damages and an award of attorney’s fees might have been appropriate. Zenith in this litigation did present enough new evidence, particularly in relation to infringement, to avoid additional liability because of the prior finding of validity. CBS’ claim for attorney’s fees and treble damages will therefore be denied.

VIII.

CONCLUSION

In sum, this Court finds Fyler and Rowe patent 2,690,518 valid, and claim 7 of that patent infringed by the Zenith single metal and bi-metal spring color TV picture tubes. The Court also finds Giuffrida patent 3,179,836 valid, and claim 5 of that patent infringed by the Zenith round faced tubes. A master will be appointed to determine the appropriate reasonable royalty to be assessed against Zenith. CBS shall recover its costs in prosecution of this suit.

It is so ordered.

[See following illustrations] 
      
      . CBS also sued the Rauland Corporation, Zenith’s television tube manufacturing subsidiary. Rauland has since become a division of Zenith and thus the defendants will be referred to collectively as “Zenith.”
     
      
      . For a fuller discussion of the history of color TV, see the decisions in Columbia Broadcasting System v. Sylvania Electric Prods., 294 F.Supp. 468 (D.Mass.1968), aff’d in part, remanded in part, 415 F.2d 719 (1st Cir. 1969), cert. den., 396 U.S. 1061, 90 S.Ct. 755, 24 L.Ed.2d 755 (1970). The Sylvania litigation involved the patents in suit here. The ’518 patent was found valid by both the district court and the Court of Appeals; the Giuffrida patents were found valid by the district court but the Court of Appeals remanded the validity issue to the district court to examine the file wrapper to determine the scope of the patents. The Sylvania litigation was settled before the district court could conclude this new inquiry. The effect of the Sylvania decision on this litigation will be discussed below.
     
      
      . Although electron beams have no color, TV engineers identify the beam with the color emitted by the phosphor dots it strikes. The excited phosphors produce photons of various wave lengths, not the electron beams.
     
      
      . Since the mask when clamped was under considerable tension, the RCA tube received the nickname “drumhead” tube.
     
      
      . The mask, phosphor screen, and frame were then placed in the tube envelope and mounted in proper geometric relationship with the electron guns. The picture on the phosphor screen was viewed by looking into the tube through a transparent faceplate.
     
      
      . See footnote 5, infra, for a description of the “color sandwich.” This portion of the RCA tube weighed some 6 pounds.
     
      
      . If the occluded gases were not removed, the vacuum in the tube would be insufficient and the tube would have a very short operating, life.
     
      
      . The relevancy of these conceptions of color TY tubes as prior art to the ’518 patent will be discussed below. See page 788, infra.
      
     
      
      . The Fyler and Rowe invention in suit here is described in claim 7 of the ’518 patent. See Appendix A for the full text of the ’518 patent.
     
      
      . This approach is similar to the Blonder-Tongue standard of a full, fair opportunity to litigate substantively and evidentially. A distinction exists, however. In the present case the prior finding of validity is only a piece of evidence (albeit a strong one) while in the Blonder-Tongue situation the prior adjudication of invalidity acts as a bar to further litigation unless the patentee can prove the first litigation was so seriously defective as to be entitled to almost no weight at all. Where a prior finding of validity exists, a defendant need only bring forth some quantum, of new, relevant evidence to obtain a full trial on the merits while the patentee whose patent has been previously found invalid must prove fundamental error to obtain a second trial on the merits.
     
      
      . The Court recognizes that its view of comity may make a substantive difference only in limited circumstances where a defendant can come forward with no new relevant evidence making summary judgment appropriate. The Court believes, however, that the views expressed herein will encourage settlements of disputes after an initial finding of validity unless the initial determination is infected with substantial error or is based on a seriously inadequate record.
     
      
      . The Kaplan paper was a copy of a speech given to the same society in April 1952.
     
      
      . Others in the industry including Hannah Moodey, KCA tube engineer, and Dr. John Sheldon, a Corning Glass engineer, also conceived of a curved shadow mask coupled with a curved screen but abandoned the idea because it was thought that the mask had to be pre-stressed in the fashion of the RCA drumhead tube. It is physically impossible to pre-stress a curved mask.
     
      
      . Zenith contends the curved shadow mask, curved screen tube was not made because no one in the industry knew how to place phosphor dots on a spherically curved screen. This argument is not supported by the record> See pages 789-791, infra.
      
     
      
      . Zenith argues that the RCA license was a disguised partial rebate of royalties. Zenith was unable to prove this notion at trial. , Considering the sizeable investment of money and prestige RCA had in color TV, it is likely that the license was a true judgment by RCA on patentability. Moreover, even if the license constituted a partial rebate of royalties, the net effect reduced RCA’s economic position. That RCA was willing to reduce its economic position vis-a-vis CBS is also a measure of patentability.
     
      
      . The ’518 patent shows an arrangement in which the mask was held in place by screws passing through its rim.
     
      
      . CBS also argues that infringement is proved because Zenith tubes can be substituted type-for-type with the infringing Sylvania tubes. The Court cannot accept this argument. Tube substitution is a consequence of similar receiver circuitry, not the internal construction of the picture tube.
     