
    J. & G. DEVELOPMENT COMPANY, Inc., and the Filtron Company, Inc., Plaintiffs, v. ALL-TRONICS INC., Defendant.
    Civ. No. 19139.
    United States District Court E. D. New York.
    Dec. 18, 1962.
    See also 198 F.Supp. 392.
    David S. Kane, New York City (Haynes N. Johnson, S. C. Yuter and Kane, Dalsimer & Kane, New York City, of counsel), for plaintiffs.
    John F. Neary, Jr., New York City (Walter H. Free and Brumbaugh, Free, Graves & Donohue, New York City, of counsel), for defendant.
   DOOLING, District Judge.

In this patent infringement suit, in which the facts have been separately found, it has been concluded that the inventions of the patent were completely anticipated by a commercial article in public use and on sale for more than a year before the application was filed and that invention by the standard of 35 U.S.C. § 103 is not present.

The field of the problem to which the devices of the patent are addressed is that of the purging from a line carrying an electrical current of a particular characteristic of all the unwanted electric currents to which the environment of the current carrying line exposes it. Within that field the devices of the patent deal with filters that will suppress the radio (i. e., high) frequency interfering currents in the line, so as to prevent malfunction in the equipment in the area served by the line. And, within that sector, the filters of the patent are meant to suppress “the stray capacitive and inductive coupling * * * between the leads within the filter net work”, for, particularly when they are at the high frequencies that are the concern of the patentees, the stray currents are radiated from one to another point as well as transmitted by conduction.

The Patentees’ specification and claims embrace various combinations of internal shielding elements with other elements usual to filters, and appropriate location of the terminals to minimize or avoid coupling around the outside of the filter. A fairly usual filter is a sealed metal box. From it protrude two terminals by which the filter is installed in the line. Inside the filter the line passes from the input terminal through an inductor (coil) to the output terminal. The terminals are insulated from the metal box so that current on the line would flow through the filter without flowing off to the metal box at all, but for certain internal features that characterize filters. Inside the filter are two “capacitors”; each capacitor consists of a pair of conducting surfaces that are positioned close to each other but separated by non-conducting matter (dielectric), such as insulating paper. One surface (or “electrode”) of each capacitor is connected to the line between one terminal and the inductor, and the other electrode (or surface) of that same capacitor is connected to the inner wall -of the metal box (or “housing”), which is grounded. While the two electrodes (or surfaces) of a capacitor are not in electrical contact, since they are “insulated” from each other, they nevertheless afford an easy and, indeed, a preferred “low-impedance” path for high frequency currents — and, because of the gap between electrodes, offer “high-impedance” to low frequency currents. The inductor or coil works oppositely; it readily passes low frequency currents but impedes high frequency currents. Hence such a usual filter will operate to shunt off the line undesired high frequency currents (for they will be sidetracked to the — for them — low impedance path of the capacitors and go to ground via the housing). The current of desired characteristic will go on through the filter via the — for it — low impedance path of the inductor. So much is very old, as electrical lore goes.

It was known that “leads”, that is conducting “wires”, within the filter structure could themselves propagate interfering waves (as well as “conduct” them) and so the art of the filter embraced preventing the filter from defeating its own function through operating as a by-pass for those high-frequency currents that could radiate from terminal to terminal within (or outside) the filter from the “leads”. Radical reduction of lead lengths ameliorated the coupling, obviously. The patentees suppressed the stray currents incident to the construction of the filter itself by disposing the terminals at opposite ends of the filter, isolating each terminal inside the filter behind a shielding wall that completely enclosed it, and butting each capacitor tight against the shield wall at the terminal so that the capacitor itself reinforced the seal of the shielding wall.

Tobe-Deutschmann’s filter 1547 had anticipated this solution; quite possibly the anticipation came about as the consequence of Tobe-Deutschmann’s use of a threaded stud to serve the combined offices of terminal, conductor and mechanical support of the capacitor; that involved using nuts and washers and a bushing in the openings of the housing to get the triple function performed in insulation from the housing while at the same time grounding one electrode of the capacitor against the housing at the terminal area. Possibly as a result of these mechanical aspects of the threaded stud type of assembly Tobe-Deutsch-mann used what have been called deboss-ments and used reversed ground cups to encircle the terminal openings; and, as in Hanopol U. S. Patent No. 2,346,162 Figure 1 (cited in the Patent Office) a shielded compartment about one terminal and between it and the other terminal was inevitable. As inevitable was the suppression of radio frequency coupling from the lead between the inner-face of the housing at the terminal opening and the electrode of the associated capacitor that was grounded to the other side of the encircling ground cup (or the other side of the plate that closed off the debossment recess). Here function flowed from structure, willy-nilly.

Some measurable degree of added suppression, additive, that is, to that of the same filter assembly devoid of the pat-entees’ internal shielding and positioning of terminals, is not a requisite of the filters of the patent; the teaching of the patent embraces the whole range of at-tenuations flowing from the- structures ■claimed. Hence it is that Tobe-Deutsch-mann filter 1547 need not display at-tenuations as good, nor, in every embodiment evince the maximum of structural tightness that would secure the maximum of attenuation. Nor, is dimension •of spacing between shield wall and housing a’, element of the claims of the patient ; the filters of Filtron and All-Tronics show a wide spacing, relatively, while Tobe-Deutschmann show only a little space in some embodiments, not, perhaps, more than enough to accommodate washers or fasteners.

Apart from anticipation by Tobe-.Deutschmann’s filter 1547, which without much room for doubt, must be dated to January 1953 at very latest and ■should, fairly, be dated to the spring of 1952 in the form depicted on Exhibit P, there is not present in the patentees’ work an advance that satisfies the standard of 35 U.S.C. § 103. Shielding, shield wall elements and capacitors used in cross-section as shield elements had all, by 1953, become part of the language ■of the electrical interference suppression art. The patentees’ combination of them .and the result were not unobvious nor surprizing but were the product of applying existing elements to their intended use in a manner that was a function •of their separate natures.

Although the point is not essential to ■disposition, it has been concluded that the plaintiffs’ filter was not in public use or on sale more than a year before the application was filed. It might have been different had there been a test installation so that use and test or dem■onstration were merged. The dominant here was test and the “use” was not meaningfully such — indeed, it seems to "have been the “use” of barren testing. 'Nor was there the kind of offer to sell that amounts to the statutory condition ■of being “on sale”. No production beyond prototypes had taken place nor is there evidence that Filtron was farther advanced than a readiness to negotiate for production quantities of a production model that lay in the future beyond the tested prototypes.  