WESTERN ELECTRIC COMPANY'S PATENT

335 [1965] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [No.9] Western Electric Co.' s Patent (Patent, Extension) IN THE HIGH COURT OF JUSTICE-CHANCERY DIVISION Before MR. JUSTICE LLOYD-JACOB 26th, 27th, 28th, 29th, 30th October, 2nd, 3rd, 4th, 5th, 6th, 9th, l Oth, 11th, 12th, 13th November, 1964, and 11th January, 1965 5 WESTERN ELECTRIC COMPANY'S PATENT Patent-extension-Insufficiency of remuneration-Transistor-Failure of petitioners to discharge burden of proof-Extension rejused-i-Costs-s-Representaiion of Comptroller and Government departments by same counsel-Practice varied. 10 S.C.C.R. r. 6(1)(e). The petitioners applied for an extension of one of the original patents relating to transistors on the ground of inadequacy of remuneration. It was established that the invention was one of great benefit to the public such as to justify the grant of an extension of up to 10 years, if the remaining circumstances justified it. During the 15 life of the patent, the petitioners had received by way of royalties about {1.5m. from the United Kingdom and Esm. from the rest of the world, as well as enjoying many other direct and indirect benefits in the form of cross licences and manuiacturing profits. Although the petitioners had spent on research some £56m., only £140,000 of this was spent before the date of application for the present patent, and it 20 appeared that this sum was not devoted exclusively to the one invention. Held, that the petitioners had failed to establish inadequacy of remuneration and an extension was refused. Following dicta in earlier authorities, the Comptroller General and certain other Government departments were represented by the same counsel. It was brought to 25 the attention of the court that although the problem did not arise in this case because other respondents lvere present to argue the case against the grant of an extension, difficulty could arise if a Government department were the sole respondent. If the same counsel appeared for the Comptroller and the Government department, the Comptroller would then be unable to act in his usual capacity of amicus curie, 30 Held, that in the light of the extension of Government functions, the old rule should no longer apply. According to S.C.C.R. r.(l)(e) "except in special circumstances, no order shall be made giving more than one set of costs among all the opponents of a petition or originating motion for extension of the term of a patent under section 23, 24 or 336 [No.9] REPORTS OF PAT ENT, DESIGN AND TRAD E MARK CASES [1965] Western Electric Co.'s Patent (Patent, Extension) 25 of the Patents Act 1949, if the court refuses the prayer of the petition or the relief sought by the summ ons." It was submitted that this was an exceptional case because each of the opponents had dealt with different fields of application of the invention. Th e petitioners contended that all the opponents could have been represented by the same counsel. 5 Held, that only one order as to costs would be made, and that one group of opponents would receive two-thirds of their costs and the other group one-third. This was a petition to the court for an extension of letters patent No. 694,021 granted to Western Electric Company based upon inadequacy of remuneration. The patent in suit related to the transistor, and the abridgement of the specification 10 was as follows. " An electric circuit element comprises a body of semi-conductor material having a first electrode making a rectifier connection, a low resistance second electrode and a third electrode, and is such that if a forward bias is applied between the first and second electrodes, and an opposite bias between the third and second electrodes, an 15 input signal applied to the first electrode results in an amplified signal in the output circuit including the third electrode. The device may be used for amplifying or generating electric oscillations. In Figs. 1 and I A a block of " N " -type germanium is provided with a low spacing resistance base electrode contact 2, and two rectifier contacts 5 and 6, a rectifier 20 contact being regarded as a high resistance contact, the effective resistance of which varies according to the direction of the applied voltage. The two rectifier contacts are placed close together, the " emitter" electrode 5 being biased a fraction of a volt in the direction of easy current flow, and the " collector " . electrode 6 being biased between - 5 and - 50 volts in the reverse direction. If 25 a signal is applied bet:veen the em i~ter .5 and the base electrode 2, an amplified signal output appears III the load circuit connected between the collector 6 and the base electrode 2. A table of operating characteristics is given. The functional similarity between the emitter, base and collector electrodes and the cathode, control grid and anode respectively of a thermionic valve is discussed and reference 30 made to circuits corresponding to " grounded grid," " cathode follower," and to oscillator circuits. 337 [1965] REPORTS OF PATENT, DESIGN AND TRADE MARK CASES [No.9] Western Electric CO.'s Patent (Patent, Extension) Alternative constructions are described in which the collector electrode may comprise two or more elements symmetrically disposed about the emitter, or be in the form of a ring or two semi-circular metal spots, or may consist of the plated surface of a cone. Alternatively, the emitter and collector electrodes may S consist respectively of the two plated sides of a wedge-shaped piece of insulating material, providing contacts' of linear form. The semi-conducting block 1 of "N "-type material is regarded as having a thin '" P "-type layer 3 on the surface of the block, the two layers being separated by a high-resistance barrier 4. The thin layer may be a "chemical" layer pro10 duced by variations in the impurity content, or a "physical" layer in a block having a uniform concentration of donor impurities, due to the conditions at the surface. Reference is made to the use of silicon, germanium, cuprous oxide or silicon carbide as the basic semi-conducting material, and the use of impurities such as phosphorus, antimony, arsenic, boron or aluminium to provide desired 15 "N" or " P " characteristics. A block of silicon material suitable for the device and having a thin layer of opposite conductivity type may be prepared as described in specifications 592,260, 592,303 or 669,399, or a block of "N "-type germanium may be prepared as described in specification 632,942. After being plated to provide the low resistance 20 contact, the block of "N"-type germanium may be subjected to anodic oxidization treatment in which the surface to be treated is covered with polymerized glycol borate, and then subjected to electric currents. When assembled with the contact arrangement as shown in Fig. 1, an electrical forming process may be carried out in which a potential in excess of the peak back voltage is applied between one 25 or b (...truncated)