US SUPREME COURT DECISIONS

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. chanrobles.com-red

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.