The patent having been found invalid, it follows that the
verdict must be set aside and the defendant's motion for judgment
under Rule 50(b) granted. However, the parties are entitled, in
the event of an appeal, to have the Court's rulings upon the
other questions presented.
The issue whether Fischer or Diament first conceived the idea
of the patent in suit was a clear-cut fact issue with substantial
evidence upon each side. It was properly submitted to the jury.
The plaintiff's evidence upon the question of damages was
sufficient to support the jury's verdict in that respect.
One issue of law reserved for determination by the Court was
whether the patent is invalid because the claims are indefinite.
As has been pointed out, according to the plaintiff's expert,
which is the only testimony produced by the plaintiff upon the
point, the improvement in viscosity immunity which the plaintiff
claims as the new result arises from the size and number of ribs
rather than their shape. In other words, for a tube and float of
given dimensions the more fluid you allow to flow through the
tube the wider will be the range of viscosity immunity. Platt
said in effect that if enough of the bead guides of the Fischer
type were used there would be hardly any improvement over Cox.
Upon this vital point the only thing to be found in the claims
is that there shall be a "plurality" of ribs and that they shall
have "relatively small circumferential dimension". I am aware
that in a number of cases (cited by the plaintiff) such terms as
"relatively small" or "relatively thin" have been held to be a
sufficient compliance with the statutory requirement that the
patentee "particularly point out and distinctly claim" his
invention. However, in many other cases the opposite conclusion
has been reached. Usually it is a matter of reading the claims in
connection with the specification for qualification and
definition. Each case presents a different question.
In the present case I find nothing in the disclosure of the
entire patent which would tell the public what they can do to
avoid infringement in this respect or where infringement begins.
The rule is not a technical one but made to protect the public
and keep the patentee from taking an advantage to which he is not
I conclude that the claims are invalid for want of
The only other issue reserved for determination by the Court
requiring extended consideration is the defendant's contention
that the subject matter claimed in the patent was actually the
conception of Cox and not Fischer.
The claims call for "a plurality of circumferentially-spaced
transversely-protruding axially-extending float-guiding beads
formed on the inner wall thereof, said beads having convex
cross-section and having relatively small circumferential
dimension." Whatever virtue the patent has resides in the
elements so described, and Cox's conception of flutes or ribs for
his tube was something entirely different.
The facts are that prior to November 1940 Cox had sent Fischer
a mandrel or mandrels upon which Fischer was to form tapered
glass tubes. Fischer made a tube and sent it to Cox. This tube,
Cox found, did not conform to the mandrel because the glass had
not flowed uniformly around the corners of the flutes. To meet
this difficulty, Cox made up a sketch of proposed changes in the
mandrel which he sent to Fischer. This sketch merely showed the
corners of the flutes slightly rounded off. The surfaces which
the flutes presented to the float were still definitely concave
as in the original mandrel, and though not quite so wide as they
had been, still had large, rather than "relatively small",
circumferential dimension. On November 23, Cox wrote Fischer a
letter in which he referred to the sketch, saying, "Since we do
not require a wide land for the guide" etc.
Following this correspondence, the mandrel was changed in
accordance with the sketch and 160 to 170 tubes were manufactured
from it by Fischer and sent to Cox during 1941 and 1942. These
tubes had numerous imperfections. The main trouble was that the
guiding surfaces were not smooth from top to bottom. In addition,
the glass had not flowed closely onto the guiding surfaces of the
ribs with the result that, in some of the tubes, some of the
ribs, instead of having concave guiding surfaces to conform to
the mandrel, had slightly convex surfaces. At these points the
float would have a line guide.
Cox used the tubes. In his testimony he said that the convexity
of some of the ribs was not important, but he never said he
wanted or intended that the guiding surfaces should be anything
but the concave guiding surfaces which the mandrel should have
On March 3, 1941, Fischer sent a memorandum to Diament, his
sales representative. He enclosed part of a page of an
advertising pamphlet which showed an artist's drawing of a cross
section of a tube having the wide ribs of the Cox tubes, but
definitely convex surfaces. In his memorandum he referred to the
drawing as "Mr. Cox's development of the fluted tube".
The fact is that Cox did not develop or intend to develop a
tube with convex beads of small circumferential dimension. It may
be that Fischer thought he did, but that does not change the fact
that the tubes which Cox got were made unintentionally and did
not conform to his mandrel and were not what he expected to get
or wanted. Plainly, Cox was not the conscious originator of the
idea of using convex ribs occupying a smaller part of the cross
section of the tube.
What has just been said disposes of the defense that the
claimed subject matter of the patent had been in public use or
sold in the United States more than one year before the
application. It is unnecessary to decide the disputed question
whether the Cox and Bendix uses, proved by the testimony of the
defendant's witnesses, Cox and Friedli, were public or private
uses. If the rotameters which were so used do not embody the
concept described in the patent, and I have found that they did
not, they cannot be asserted against the validity of the patent.
I find no misrepresentations made by the plaintiff to the
Patent Office in the course of prosecuting the patent which would
invalidate it if it were otherwise valid.
Finally, I find that if the patent were valid the defendant's
accused structure would infringe.
The motion for new trial is denied.
The defendant's request for allowance of attorney's fees is
Judgment for the defendant.