Respondents sued the Government under 28 U.S. C. §1498 charging
infringement and breach of contract to compensate for use of a wet
battery on which a patent had been issued to respondent Adams. The
battery consisted of a magnesium electrode (anode) and a cuprous
chloride electrode (cathode) placed in a container with water to be
supplied as the electrolyte, providing a constant voltage and
current without the use of acids. Despite initial disbelief in the
battery's efficacy by government experts to whose attention Adams
brought his invention, the Government ultimately (but without
notifying Adams) put the battery to many uses. In opposition to
respondents' suit, the Government claimed the device unpatentable
because the use of magnesium and cuprous chloride to perform the
function shown by Adams had been previously well known in the art
and their combination represented no significant change compared to
the prior art wet battery designs such as those using a zinc anode
and silver chloride cathode for which magnesium and cuprous
chloride were known substitutes. The Court of Claims adopted the
Trial Commissioner's finding that the patent was valid and
infringed by some of the accused devices. Six months later,
following respondents' motion to amend the judgment, that court
found no breach of contract. More than 90 days after the initial
judgment, but less than that period after the contract decision,
the Government sought a time extension for review as to the issue
of patent validity. Such review was later granted though service on
respondents of the petition for writ of certiorari was delayed
beyond the time prescribed by this Court's rules.
Held:
1. The petition for certiorari was timely, since the 90-day
filing period commenced not with the initial judgment, but with the
judgment on the contract issue; nor did failure to comply with the
Court's rules as to service of the petition bar this review, since
the service requirements therein are not jurisdictional, and no
prejudice resulted from the Government's inadvertent failure to
meet those requirements. Pp.
383 U. S.
41-42.
2. The Adams patent is valid since it satisfied the separate
tests of novelty, nonobviousness, and utility required for issuance
of a patent.
Graham v. John Deere Co., ante, p.
383 U. S. 1. Pp.
383 U. S.
48-52.
Page 383 U. S. 40
3. The Adams battery was novel. Pp.
383 U. S.
48-51.
(a) The fact that it was water-activated set it apart from the
prior art.
Sinclair Carroll Co. v. Interchemical Corp.,
325 U. S. 327,
distinguished. Pp.
383 U. S.
48-50.
(b) The combination of magnesium and cuprous chloride was novel
in the light of the prior art. P.
383 U. S.
50.
(c) The use of magnesium for zinc and cuprous chloride for
silver chloride did not involve merely equivalent substitutes, as
is evidenced by the fact that the Adams battery had different
operating characteristics from those of the batteries relied upon
by the Government. Pp.
383 U. S.
50-51.
4. The Adams battery was nonobvious. Pp.
383 U. S.
51-52.
(a) Though each of the battery's elements was well known in the
prior art, to combine them as Adams did required that a person
reasonably skilled in that art ignore that open-circuit batteries
which heated in normal use were not practical, and that
water-activated batteries were successful only when combined with
electrolytes harmful to the use of magnesium. Pp.
383 U. S.
51-52.
(b) Noted experts had expressed initial disbelief in the Adams
battery. P.
383 U. S.
52.
(c) In a crowded art replete with a century and a half of
advance, the Patent Office could find no reference to cite against
the Adams application. P.
383 U. S.
52.
165 Ct.Cl. 576, 330 F.2d 622, affirmed.
MR. JUSTICE CLARK delivered the opinion of the Court.
This is a companion case to No. 11,
Graham v. John Deere
Co., decided this day along with Nos. 37 and 43,
Calmar,
Inc. v. Cook Chemical Co. and
Colgate-Palmolive Co. v.
Cook Chemical Co. The United States seeks review of a judgment
of the Court of Claims, holding valid and infringed a patent on a
wet battery issued to
Page 383 U. S. 41
Adams. This suit under 28 U.S.C. § 1498 (1964 ed.) was brought
by Adams and others holding an interest in the patent against the
Government charging both infringement and breach of an implied
contract to pay compensation for the use of the invention. The
Government challenged the validity of the patent, denied that it
had been infringed or that any contract for its use had ever
existed. The Trial Commissioner held that the patent was valid and
infringed in part, but that no contract, express or implied, had
been established. The Court of Claims adopted these findings,
initially reaching only the patent questions, 330 F.2d 622, 165
Ct.Cl. 576, but subsequently, on respondents' motion to amend the
judgment, deciding the contract claims as well. 330 F.2d at 634,
165 Ct.Cl. at 598. The United States sought certiorari on the
patent validity issue only. We granted the writ, along with the
others, in order to settle the important issues of patentability
presented by the four cases. 380 U.S. 949. We affirm.
I
While this case is controlled on the merits by No. 11,
Graham, ante, p.
383 U. S. 1,
respondents have raised threshold issues as to our jurisdiction
which require separate handling. They say that the petition for
certiorari came too late, contending that the 90-day period for
filing began with the date of the initial judgment, rather than the
date of the decision on the contract issue, citing
FTC v.
Minneapolis-Honeywell Co., 344 U. S. 206
(1952). We cannot agree, first, because that case did not involve a
timely motion to amend the judgment, [
Footnote 1] and, secondly, because here the Government's
liability was inextricably
Page 383 U. S. 42
linked with the alleged contract action, which was not
determined until the latter judgment.
Nor is there merit in respondents' contention that the
Government failed to comply with the requirements of our Rules
21(1) and 33 as to service, since these requirements are not
jurisdictional, no prejudice resulted, and the failure was
inadvertent.
We turn now to the merits.
II
The Patent in Issue and Its Background
The patent under consideration, U.S. No. 2,322,210, was issued
in 1943 upon an application filed in December, 1941, by Adams. It
relates to a nonrechargeable, as opposed to a storage, electrical
battery. Stated simply, the battery comprises two electrodes -- one
made of magnesium, the other of cuprous chloride -- which are
placed in a container. The electrolyte, or battery fluid, used may
be either plain or salt water.
The specifications of the patent state that the object of the
invention is to provide constant voltage and current without the
use of acids, conventionally employed in storage batteries, and
without the generation of dangerous fumes. Another object is "to
provide a battery which is relatively light in weight with respect
to capacity" and which
"may be manufactured and distributed to the trade in a dry
condition and rendered serviceable by merely filling the container
with water."
Following the specifications, which also set out a specific
embodiment of the invention, there appear 11 claims. Of these,
principal reliance has been placed upon Claims 1 and 10, which
read:
"1. A battery comprising a liquid container, a magnesium
electropositive electrode inside the container and having an
exterior terminal, a fused cuprous chloride electronegative
electrode, and a terminal connected with said electronegative
electrode. "
Page 383 U. S. 43
"10. In a battery, the combination of a magnesium
electropositive electrode, and an electronegative electrode
comprising cuprous chloride fused with a carbon catalytic
agent."
For several years prior to filing his application for the
patent, Adams had worked in his home experimenting on the
development of a wet battery. He found that when cuprous chloride
and magnesium were used as electrodes in an electrolyte of either
plain water or salt water, an improved battery resulted.
The Adams invention was the first practical, water-activated,
constant potential battery which could be fabricated and stored
indefinitely without any fluid in its cells. It was activated
within 30 minutes merely by adding water. Once activated, the
battery continued to deliver electricity at a voltage which
remained essentially constant regardless of the rate at which
current was withdrawn. Furthermore, its capacity for generating
current was exceptionally large in comparison to its size and
weight. The battery was also quite efficient in that substantially
its full capacity could be obtained over a wide range of currents.
One disadvantage, however, was that, once activated, the battery
could not be shut off; the chemical reactions in the battery
continued even though current was not withdrawn. Nevertheless,
these chemical reactions were highly exothermic, liberating large
quantities of heat during operation. As a result, the battery
performed with little effect on its voltage or current in very low
temperatures. Relatively high temperatures would not damage the
battery. Consequently, the battery was operable from 65 below zero
Fahrenheit to 200 Fahrenheit.
See findings at 330 F.2d at
632, 165 Ct.Cl. at 591-592.
Less than a month after filing for his patent, Adams brought his
discovery to the attention of the Army and Navy. Arrangements were
quickly made for demonstrations
Page 383 U. S. 44
before the experts of the United States Army Signal Corps. The
Signal Corps scientists who observed the demonstrations and who
conducted further tests themselves did not believe the battery was
workable. Almost a year later, in December, 1942, Dr. George Vinal,
an eminent government expert with the National Bureau of Standards,
still expressed doubts. He felt that Adams was making "unusually
large claims" for "high watt hour output per unit weight," and he
found "far from convincing" the graphical data submitted by the
inventor showing the battery's constant voltage and capacity
characteristics. He recommended, "Until the inventor can present
more convincing data about the performance of his [battery] cell, I
see no reason to consider it further."
However, in November, 1943, at the height of World War II, the
Signal Corps concluded that the battery was feasible. The
Government thereafter entered into contracts with various battery
companies for its procurement. The battery was found adaptable to
many uses. Indeed, by 1956, it was noted that
"[t]here can be no doubt that the addition of water activated
batteries to the family of power sources has brought about
developments which would otherwise have been technically or
economically impractical."
See Tenth Annual Battery Research and Development
Conference, Signal Corps Engineering Laboratories, Fort Monmouth,
N.J., p. 25 (1956).
Also, see Finding No. 24, 330 F.2d at
632, 165 Ct.Cl. at 592.
Surprisingly, the Government did not notify Adams of its changed
views, nor of the use to which it was putting his device, despite
his repeated requests. In 1955, upon examination of a battery
produced for the Government by the Burgess Company, he first
learned of the Government's action. His request for compensation
was denied in 1960, resulting in this suit.
Page 383 U. S. 45
III
The Prior Art
The basic idea of chemical generation of electricity is, of
course, quite old. Batteries trace back to the epic discovery by
the Italian scientist Volta in 1795, who found that when two
dissimilar metals are placed in an electrically conductive fluid,
an electromotive force is set up and electricity generated.
Essentially, the basic elements of a chemical battery are a pair of
electrodes of different electrochemical properties and an
electrolyte which is either a liquid (in "wet" batteries) or a
moist paste of various substances (in the so-called "drycell"
batteries). Various materials which may be employed as electrodes,
various electrolyte possibilities, and many combinations of these
elements have been the object of considerable experiment for almost
175 years.
See generally, Vinal, Primary Batteries (New
York 1950).
At trial, the Government introduced in evidence 24 patents and
treatises as representing the art as it stood in 1938, the time of
the Adams invention. [
Footnote
2] Here, however, the Government has relied primarily upon only
six of these references, [
Footnote
3] which we may summarize as follows.
The Niaudet treatise describes the Marie Davy cell invented in
1860 and De La Rue's variations on it. The battery comprises a zinc
anode and a silver chloride cathode. Although it seems to have been
capable of working in an electrolyte of pure water, Niaudet says
the battery was of "little interest" until De La Rue used a
solution of ammonium chloride as an electrolyte. Niaudet also
states that
"[t]he capital advantage of this battery,
Page 383 U. S. 46
as in all where zinc with sal ammoniac [ammonium chloride
solution] is used, consists in the absence of any local or internal
action as long as the electric circuit is open; in other words,
this battery does not work upon itself."
Hayes likewise discloses the De La Rue zinc-silver chloride
cell, but with certain mechanical differences designed to restrict
the battery from continuing to act upon itself.
The Wood patent is relied upon by the Government as teaching the
substitution of magnesium, as in the Adams patent, for zinc. Wood's
patent, issued in 1928, states:
"It would seem that a relatively high voltage primary cell would
be obtained by using . . . magnesium as the . . . [positive]
electrode, and I am aware that attempts have been made to develop
such a cell. As far as I am aware, however, these have all been
unsuccessful, and it has been generally accepted that magnesium
could not be commercially utilized as a primary cell
electrode."
Wood recognized that the difficulty with magnesium electrodes is
their susceptibility to chemical corrosion by the action of acid or
ammonium chloride electrolytes. Wood's solution to this problem was
to use a
"neutral electrolyte containing a strong soluble oxidizing agent
adapted to reduce the rate of corrosion of the magnesium electrode
on open circuit."
There is no indication of its use with cuprous chloride, nor was
there any indication that a magnesium battery could be
water-activated.
The Codd treatise is also cited as authority for the
substitution of magnesium. However, Codd simply lists magnesium in
an electromotive series table, a tabulation of electrochemical
substances in descending order of their relative electropositivity.
He also refers to magnesium in an example designed to show that
various substances are more electropositive than others, but the
discussion involves a cell containing an acid which would destroy
magnesium within minutes. In short, Codd indicates, by inference,
only that magnesium is a theoretically
Page 383 U. S. 47
desirable electrode by virtue of its highly electropositive
character. He does not teach that magnesium could be combined in a
water-activated battery, or that a battery using magnesium would
have the properties of the Adams device. Nor does he suggest, as
the Government indicates, that cuprous chloride could be
substituted for silver chloride. He merely refers to the cuprous
ion -- a generic term which includes an infinite number of copper
compounds -- and in no way suggests that cuprous chloride could be
employed in a battery.
The Government then cites the Wensky patent, which was issued in
Great Britain in 1891. The patent relates to the use of cuprous
chloride as a depolarizing agent. The specifications of his patent
disclose a battery comprising zinc and copper electrodes, the
cuprous chloride being added as a salt in an electrolyte solution
containing zinc chloride as well. While Wensky recognized that
cuprous chloride could be used in a constant-current cell, there is
no indication that he taught a water-activated system or that
magnesium could be incorporated in his battery.
Finally, the Skrivanoff patent depended upon by the Government
relates to a battery designed to give intermittent, as opposed to
continuous, service. While the patent claims magnesium as an
electrode, it specifies that the electrolyte to be used in
conjunction with it must be a solution of "alcoline,
chloro-chromate, or a permanganate strengthened with sulphuric
acid." The cathode was a copper or carbon electrode faced with a
paste of "phosphoric acid, amorphous phosphorous, metallic copper
in spangles, and cuprous chloride." This paste is to be mixed with
hot sulfuric acid before applying to the electrode. The
Government's expert testified in trial that he had no information
as to whether the cathode, as placed in the battery, would, after
having been mixed with the other chemicals prescribed, actually
Page 383 U. S. 48
contain cuprous chloride. Furthermore, respondents' expert
testified without contradiction that he had attempted to assemble a
battery made in accordance with Skrivanoff's teachings, but was met
first with a fire when he sought to make the cathode, and then with
an explosion when he attempted to assemble the complete
battery.
IV
The Validity of the Patent
The Government challenges the validity of the Adams patent on
grounds of lack of novelty under 35 U.S.C. § 102(a) (1964 ed.), as
well as obviousness under 35 U.S.C. § 103 (1964 ed.) As we have
seen in
Graham v. John Deere Co., ante, p.
383 U. S. 1, novelty
and nonobviousness -- as well as utility -- are separate tests of
patentability, and all must be satisfied in a valid patent.
The Government concludes that wet batteries comprising a zinc
anode and silver chloride cathode are old in the art, and that the
prior art shows that magnesium may be substituted for zinc and
cuprous chloride for silver chloride. Hence, it argues that the
"combination of magnesium and cuprous chloride in the Adams
battery was not patentable, because it represented either no change
or an insignificant change as compared the prior battery
designs."
And, despite
"the fact that, wholly unexpectedly, the battery showed certain
valuable operating advantages over other batteries, [these
advantages] would certainly not justify a patent on the essentially
old formula."
There are several basic errors in the Government's position.
First, the fact that the Adams battery is water-activated sets his
device apart from the prior art. It is true that Claims 1 and 10,
supra, do not mention a water electrolyte, but, as we have
noted, a stated object of the invention was to provide a battery
rendered serviceable by the mere addition of water. While the
claims of a
Page 383 U. S. 49
patent limit the invention, and specifications cannot be
utilized to expand the patent monopoly,
Burns v. Meyer,
100 U. S. 671,
100 U. S. 672
(1880);
McCarty v. Lehigh Valley R. Co., 160 U.
S. 110,
160 U. S. 116
(1895), it is fundamental that claims are to be construed in the
light of the specifications, and both are to be read with a view to
ascertaining the invention,
Seymour v.
Osborne, 11 Wall. 516,
78 U. S. 547
(1871);
Schriber-Schroth Co. v. Cleveland Trust Co.,
311 U. S. 211
(1940);
Schering Corp. v. Gilbert, 153 F.2d 428 (1946).
Taken together with the stated object of disclosing a
water-activated cell, the lack of reference to any electrolyte in
Claims 1 and 10 indicates that water alone could be used.
Furthermore, of the 11 claims in issue, three of the narrower ones
include references to specific electrolyte solutions comprising
water and certain salts. The obvious implication from the absence
of any mention of an electrolyte -- a necessary element in any
battery -- in the other eight claims reinforces this conclusion. It
is evident that respondents' present reliance upon this feature was
not the afterthought of an astute patent trial lawyer. In his first
contact with the Government less than a month after the patent
application was filed, Adams pointed out that "no acids, alkalines
or any other liquid other than plain water is used in this cell.
Water does not have to be distilled. . . ." Letter to Charles F.
Kettering (January 7, 1942), R., pp. 415, 416.
Also see
his letter to the Department of Commerce (March 28, 1942), R., p.
422. The findings, approved and adopted by the Court of Claims,
also fully support this conclusion.
Nor is
Sinclair & Carroll Co. v. Interchemical
Corp., 325 U. S. 327
(1945), apposite here. There, the patentee had developed a rapidly
drying printing ink. All that was needed to produce such an ink was
a solvent which evaporated quickly upon heating. Knowing that the
boiling point of a solvent is an indication of its rate of
Page 383 U. S. 50
evaporation, the patentee merely made selections from a list of
solvents and their boiling points. This was no more than "selecting
the last piece to put into the last opening in a jig-saw puzzle."
325 U.S. at
325 U. S. 335.
Indeed, the Government's reliance upon
Sinclair &
Carroll points up the fallacy of the underlying premise of its
case. The solvent in
Sinclair & Carroll had no
functional relation to the printing ink involved. It served only as
an inert carrier. The choice of solvent was dictated by known,
required properties. Here, however, the Adams battery is shown to
embrace elements having an interdependent functional relationship.
It begs the question, and overlooks the holding of the Commissioner
and the Court of Claims, to state merely that magnesium and cuprous
chloride were individually known battery components. If such a
combination is novel, the issue is whether bringing them together
as taught by Adams was obvious in the light of the prior art.
We believe that the Court of Claims was correct in concluding
that the Adams battery is novel. Skrivanoff disclosed the use of
magnesium in an electrolyte completely different from that used in
Adams. As we have mentioned, it is even open to doubt whether
cuprous chloride was a functional element in Skrivanoff. In view of
the unchallenged testimony that the Skrivanoff formulation was both
dangerous and inoperable, it seems anomalous to suggest that it is
an anticipation of Adams. An inoperable invention or one which
fails to achieve its intended result does not negative novelty.
Smith v. Snow, 294 U. S. 1,
294 U. S. 17
(1935). That in 1880 Skrivanoff may have been able to convince a
foreign patent examiner to issue a patent on his device has little
significance in the light of the foregoing.
Nor is the Government's contention that the electrodes of Adams
were mere substitutions of preexisting battery designs supported by
the prior art. If the use of magnesium
Page 383 U. S. 51
for zinc and cuprous chloride for silver chloride were merely
equivalent substitutions, it would follow that the resulting device
-- Adams' -- would have equivalent operating characteristics. But
it does not. The court below found, and the Government apparently
admits, that the Adams battery, "wholly unexpectedly," has shown
"certain valuable operating advantages over other batteries," while
those from which it is claimed to have been copied were long ago
discarded. Moreover, most of the batteries relied upon by the
Government were of a completely different type, designed to give
intermittent power and characterized by an absence of internal
action when not in use. Some provided current at voltages which
declined fairly proportionately with time. [
Footnote 4] Others were so-called standard cells which,
though producing a constant voltage, were of use principally for
calibration or measurement purposes. Such cells cannot be used as
sources of power. [
Footnote 5]
For these reasons, we find no equivalency. [
Footnote 6]
We conclude the Adams battery was also nonobvious. As we have
seen, the operating characteristics of the Adams battery have been
shown to have been unexpected, and to have far surpassed
then-existing wet batteries. Despite the fact that each of the
elements of the Adams battery was well known in the prior art, to
combine
Page 383 U. S. 52
them as did Adams required that a person reasonably skilled in
the prior art must ignore that (1) batteries which continued to
operate on an open circuit and which heated in normal use were not
practical; and (2) water-activated batteries were successful only
when combined with electrolytes detrimental to the use of
magnesium. These long-accepted factors, when taken together, would,
we believe, deter any investigation into such a combination as is
used by Adams. This is not to say that one who merely finds new
uses for old inventions by shutting his eyes to their prior
disadvantages thereby discovers a patentable innovation. We do say,
however, that known disadvantages in old devices which would
naturally discourage the search for new inventions may be taken
into account in determining obviousness.
Nor are these the only factors bearing on the question of
obviousness. We have seen that, at the time Adams perfected his
invention, noted experts expressed disbelief in it. Several of the
same experts subsequently recognized the significance of the Adams
invention, some even patenting improvements on the same system.
Fischbach
et al., U.S. Patent No. 2,636,060 (1953).
Furthermore, in a crowded art replete with a century and a half of
advancement, the Patent Office found not one reference to cite
against the Adams application. Against the subsequently issued
improvement patents to Fischbach,
supra, and to Chubb,
U.S. Reissue Patent No. 23,883 (1954), it found but three
references prior to Adams -- none of which are relied upon by the
Government.
We conclude that the Adams patent is valid. The judgment of the
Court of Claims is affirmed. It is so ordered.
Affirmed.
MR. JUSTICE WHITE dissents.
MR. JUSTICE FORTAS took no part in the consideration or decision
of this case.
[
Footnote 1]
Where a timely motion is filed, the time in such cases runs from
the date of the order overruling the motion.
See Department of
Banking v. Pink, 317 U. S. 264,
317 U. S. 267
(1942);
United States v. Crescent Amusement Co.,
323 U. S. 173,
323 U. S. 177
(1944);
Forman v. United States, 361 U.
S. 416,
361 U. S. 426
(1960).
[
Footnote 2]
The references are listed in the opinion of the Court of Claims,
330 F.2d at 631, 165 Ct.Cl. at 590.
[
Footnote 3]
Niaudet, Elementary Treatise on Electric Batteries (Fishback
translation 1880); Hayes U.S.Patent No. 282,634 (1883); Wood
U.S.Patent No. 1,696,873 (1928); Codd, Practical Primary Cells
(London 1929); Wensky British Patent No. 49 of 1891; and Skrivanoff
British Patent No. 4,341 (1880).
[
Footnote 4]
It is interesting to note in this connection that, in testing
the Adams cell, the Signal Corps compared it with batteries of this
type. The graphical results of the comparison are shown in
respondents' brief, p. 51.
[
Footnote 5]
The standard text in the art states: "The best answer to the
oft-repeated question:
How much current can I draw from my
standard cell?' is `None.'" Vinal, Primary Batteries, p. 212 (New
York 1950); see also Ruben U.S. Patent No. 1,920,151
(1933).
[
Footnote 6]
In their motion to dismiss the writ of certiorari as
improvidently granted, respondents asserted that the Government was
estopped to claim equivalency of cuprous chloride and silver
chloride. We find no merit in this contention, and therefore deny
the motion.