180 F. 983 | U.S. Circuit Court for the District of Maryland | 1910
This is a suit in equity for an alleged infringement of certain claims of patents 716,504 and 757,853, both originally issued to George H. Whittingham, one of the defendants.
In 1888 Whittingham, then about 20 or 21 years of age, applied for a patent for an automatic switch for electric motors. He organized the Automatic Switch Company of Baltimore City and sub
Meanwhile the struggle between him and Whittingham for the control of the Automatic Switch Company was carried into the courts. Darrin obtained an injunction restraining Whittingham from voting certain shares of stock at the annual election for directors to be held in January, 1904. The company’s by-laws said that no election could take place unless a majority of the stock was represented at the meeting. Whittingham stayed away to break a quorum. Darrin came. A little over one-third of the shares were represented. Darrin’s friends were elected directors. The Court of Appeals of Maryland finally held that under the state corporation law as it then stood the shares present at an annual meeting could elect whether they were a minority of the whole number or not, and no matter what the company’s by-laws might say about it. So soon as this decision was handed down, Darrin took control1 and put an end to Whittingham’s connection with the company in any capacity other than as a stockholder in it. Whittingham swears, and Darrin does not deny, that Darrin said he would never allow the company to make a dollar so long as Whittingham had any stock in it. Whit-tingham offered to buy Darrin’s stock. Darrin would not sell unless given the exclusive New York agency. On those terms Whit-tingham, would not buy. Whittingham began legal proceedings to secure control of the annual election to be held in January, 1905. Then an agreement was made. Darrin was to dismiss all the suits against Whittingham, several of which were pending. He was to pay Whittingham 820,000, and to pay the agent who negotiated the arrangement $2,500. In return all the Whittingham stock was to become Darrin’s. Darrin dismissed the suits. A time and place for the payment of the money and the transfer of the stock was appointed. Darrin came bringing his money in large part in $5 and $10 notes. It took time to count these. While the parties were still together, a deputy sheriff appeared with an attachment in a new suit that Darrin had caused to be brought against Whittingham. Whit-tingham “had taken the precaution to transfer the stock to the name of the agent. The latter claimed that the stock was his, and he had sold it to Darrin, and that the money to be paid for it belonged to him. Darrin dropped the attachment. Whittingham says he feared Darrin would bring other suits against him. Therefore, so soon as he received his $20,000, he invested it. How he does not say. He at once transferred these investments to his wife. Darrin did bring two other suits. Why the record does not disclose. The defendants’ brief says they were fruitless. A very little while after Whitting-ham sold his stock, he came to Baltimore. He called at the shop of one William C. O'Brien, whom he had known for a long while. Some eight years before O’Brien had been in the employ of the Automatic Switch Company. Whittingham says that O’Brien was working on some original electrical devices for some of which he was seeking patents. O’Brien and Whittingham agreed to form a corporation. Mrs. Whittingham was to pay $2,400 for two-thirds
The defendants in this case are George H. Whittingham and the Monitor Manufacturing Company. The complainant is the Automatic Switch Company, a New York corporation, which has succeeded to all the business, property, and patents of the Automatic Switch Company of Baltimore City. The evidence leaves no question that the complainant company is controlled by Darrin. It does; not appear that any one else has any substantial interest in it. At the time of the filing of the bill, a motion for a preliminary injunction was made and after hearing upon affidavits was granted. The evidence has now been taken in regular course and the case submitted after final hearing.
The story of the relations of the parties to each other has been told at length, because it is necessary to decide how far the defendants are estopped in this case from making defenses which but for those relations would be open to them. The defendant George H. Whittingham was the patentee of both patents in suit. He assigned them to the corporation under which the complainant takes title ro: them. He admits that he cannot be heard to question their validity. His codefendant, the corporation now calling itself the Monitor Manufacturing Company, says that it is not bound by his estoppel. Under the circumstances in evidence this contention should not be sustained. A corporation which is alleged to infringe the patents owned by another may show that these patents are invalid in spite of the fact that their vendor is one of its officers and stockholders. Babcock & Wilcox Co. v. Toledo Boiler Works, 170 Fed. 81, 95 C. C. A. 363. In the case at bar two-thirds of the capital of the defendant corporation came from money which a few days or a few weeks before had been, paid the vendor of the patents for his stock in the company to which he had sold them. The defendant company was in large part organized for the purpose of giving him employment. Two-thirds of the stock is held by him and his wife. The company does whatever- he wills it to do. Under such a state of facts the company is bound by his estoppel. Time Telegraph Co. v. Himmer (C. C.) 19 Fed. 322; Alvin Mfg. Co. v. Scharling (C. C.) 100 Fed. 87; Marvel Co. v. Pearl (C. C.) 114 Fed. 946; Continental Wire Fence Co. v. Pendergast (C. C.) 126 Fed. 381; Mellor v. Carroll (C. C.) 141 Fed. 992.
In this case the complainant says that the defendants infringe claims 1 and 8 of patent 716,504, December 23, 1902, and claims 8, 9, 10, 1.1, and 12 of patent 757,853, April 19, 1904. Both of these patents are for improvements in the construction of electric switches. While the later in date is said to be an improvement on the earlier, the claims of the younger alleged to be infringed each contain an element not shown or claimed in the older. It is conceded that, if the defendants infringe any one of these claims 8 to 12 of patent 757,-853, they infringe all of them. The purpose of an electric switch is to make and break an electric current. When the current is broken, there is an electrical discharge through the air, the visible evidence of which is the electric spark. This sparking or arcing, as it is technically called, if uncontrolled may do damage. It is controlled by placing an electro-magnet close to the point at which the switch opens. Electricians call an electro-magnet, used for making harmless what would otherwise be a dangerous discharge, a blow-out device, because they say it blows out or disrupts the arc which is formed when the switch is open. There is no question that all this was known years before the date of the earlier of the patents in suit. When Mr. Whittingham designed the improvements in electric switches shown in the later of the patents in suit, it occurred to him that it would be a good thing to make the electro-magnet or blowout device do double duty. In his scheme it not only does its own necessary work, but it forms an arm of the switch itself. He fitted it with a contact surface so that when it touched the other arm of the switch the circuit was closed. He thought so well of this idea that he made it an element of each one of the five claims of patent 757,853 now in suit. The record does not show what special advantage in practical use this arrangement has. Complainant says it has none. It claims that the defendants infringe, although in their
Two questions are still to be answered. First. Do the defendants infringe, either claim 1 or claim 8 of patent 716,504? Second. If, in point of fact, they do not infringe either of them, are they estopped to say they do not?
The patent in suit says that the invention relates to improvements-in electric switches for reversing the current in electric motors. It declares that the invention is specially applicable for use in connection with electric elevators. It explains that one of its objects is to provide such an arrangement of parts that, when the connection with the supply circuit is broken at one side of the switch for the purpose of stopping or reversing the motor, the armature and field circuits will remain closed, and will not be opened except when the motor circuit contact blades are just about to enter the supply circuit terminals on the opposite side of the switch. This arrangement it is-said affords the armature time to slow down and stop and exhaust its-electro-magnetic current before the armature and field circuits are-broken preparatory to the reversal of the current in the armature,, thereby avoiding the destructive arcing of the terminal and contact blades which results when the armature and field circuits are br.oken-while the armature is rotating. Certain other objects are specified,, but they'do not apparently relate to the particular claims in suit.
After the enumeration of the objects of the patent, the patentee proceeds to say:
“With these and other objects in view the invention consists in certain electrical and mechanical features of construction, arrangements and combinations of the parts hereinafter fully described and claimed.”
The first claim in suit is as follows:
“In an electric-elevator system, the combination with a motor-supply circuit and contact blades and terminals for closing and opening the same, of an armature-circuit arranged to remain closed until after said contact-blades-have been brought to and past the stop position.”
In the defendants’ devices which are alleged to infringe, the contact blades are never moved beyond the stop position. The. complainant says that all the claim means is that the armature circuit shall remain
“In an electric-elevator system, a motor-reversing switch, comprising supply-circuit terminals and contact-blades; armature-circuit-terminals; and armature-eircui't contact-blades adapted to contact with said armature-circuit terminals and arranged to remain in contact therewith when the supply-circuit contact-blades have been moved to the stop position.”
It was rejected by the Patent Office examiner. He said it was too broad in view of Cook, 597,265, January 11, 1897, Herdman, 603,819, May 10, 1898, and Shepard, 641,157, January 9, 1900. Each of these patents showed a switch in which the armature circuit remained closed when the supply circuit contact blades had been moved to the stop position. The patentee then canceled the original claim No. 2, and substituted therefor the following:
“The combination of a supply circuit; an armature circuit; a switch adapted to close and opon said supply-circuit and reverse said armature-circuit, and arranged to leave said armature-circuit closed after opening the supply-circuit; a brake resistance circuit; and mechanical means arranged to automatically introduce said brake resistance circuit into the armature circuit after the supply circuit has been opened.”
This amended claim was also rejected as fully anticipated by Shepard and Plerdman.
The patentee then canceled the amended claim No. 2, and gave up the effort to get a claim which would cover a switch in which the supply circuit contact blades were not required to move past the stop position. In the defendant’s devices alleg-ed to infringe the supply circuit contact blades do not move past the stop position. It is true that the armature circuit remains closed until a period which in point of time is subsequent to the moment at which the contact blades of the supply circuit have moved to the stop position. But, in spite of this fact, I do not think that the complainant can now be heard to say that the first claim of the patent in suit is infringed by any device in which the contact blades do not move past the stop position. In so saying it is in effect asking that claim No. 1 shall now be given a meaning as broad as the -original claim No. 2. This the law will not permit. A patentee who has originally sought broader claims which were rejected and who has acquiesced in such rejection cannot under the authorities be allowed to insist upon such a construction of the allowed claim as would cover what had been previously rejected. Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U. S. 40, 14 Sup. Ct. 28, 37 L. Ed. 989; Roemer v. Peddie, 132
The complainant says that the defendants infringe the eighth claim ■of the same patent. This claim reads as follows:
“In an electric-switch system for reversing motors that employ series coils, the combination of a supply or line circuit; a switch mechanism adapted to open both sides of said line-circuit; and an armature-circuit-reversing switch arranged to be connected to the line-circuit switch by .means of the series coils, whereby when the line-circuit is open, both sides of the, motor-circuit, together with the series coils, are entirely disconnected from the line-circuit.”
I do not understand that the defendants deny that the language of this claim is broad enough to cover some of the devices made by them if it be read without reference either to the prior , art or to the particular structure described in the specifications of the patent in suit. They assert, however, that its language cannot be given a broad construction because, if it were so construed, the claim would be a claim for a mere function and therefore invalid. Second. That, if it be not for a function, it must be limited to the device or combination substantially described in the specifications. Third. That the defendants’ devices admittedly differ in some respects from the device described in the patent. In order to determine whether those differences are substantial or merely colorable, it is necessary to examine the state of the prior art and the proceedings in the Patent Office with relation to this particular patent. The defendants say that, if such examination be made, it will show that the differences between defendants’ devices and that described in the patent in suit are of such a nature that there is no infringement. It may well be that against other persons than the defendants this claim would be held void because so broadly worded as to amount to a claim for a function, or because, otherwise understood, it covers combinations already old at the time of the application for the patent in suit. The defendants, however, cannot make such a defense. As against them the claim must be conclusively presumed to be valid, and it must further be presumed to cover a construction which the patentee at the time he made the application for his patent supposed to be useful.
Does the estoppel against the defendants go still further? The complainant says it does. The words of the claim do describe switches which the defendants make. That being so, the complainant says it is the end of the case. For so saying the complainant has high authority. In Siemans-Halske Electric Co. v. Duncan Electric Mfg. Co., 142 Fed. 157, 73 C. C. A. 375, Judge Baker delivered the unanimous opinion of the Circuit Court of Appeals for the Seventh Circuit, composed at the time of himself and Judges Grosscup and Seaman. In that case a vendor had been sued for the infringement of a patent sold by him. He contended that he was entitled to prove the prior art to limit the scope of the claims of that patent. He admitted that he could not show .that either the patent or any of its claims were altogether invalid. Judge Baker said:
“Wby one defense and not the other? They are of as like blood as brothers. One is somewhat larger than the other (sic) is all. Lack of novelty defeats the complainant’s title to the whole of the property within the metes and*991 bounds of the claims. Limitation destroys his title to a part. * •* * The grant to [the patentee] was the right to exclude the public from using the inventions described in the claims, subject to the right of the public to strike down, if they could, the claims in whole or in part. The defendants assert that all that the complainant acquired by the assignment was the franchise to exclude, which had been granted to [the patentee]. This may be taken as true so far as the rights of strangers are concerned. But [the patentee’s] assignment, in fact and likewise by its very terms, was a conveyance, not only of the franchise to exclude strangers, but was also a conveyance of the inventions described in the claims. The right of [the patentee] to the inventions, if they were inventions, existed prior to, and continued independently of, the issuing of the patents. * * * If, in the face of his sale of the inventions described in the claims, as existent property into the possession of which he purported to induct his grantee, he be permitted to defeat his grantee’s right of possession of the whole or a part on the strength of a prior title outstanding at the time of the grant, he would be put on the same footing as a stranger, and the estoppel by deed would again be reduced to nihility. * * * In our judgment the reason of the case leads to the conclusion that between contracting parties extraneous evidence is inadmissible if there is no ambiguity or uncertainty in the language of the description and claims, and that, if there is uncertainty, outside evidence is admissible only to make clear what the applicant meant to claim and the government to allow, and not for the purpose of showing, even in the slightest degree, that the applicant had no right to claim and that the government was improvident in allowing what was in fact claimed and allowed.”
On the other hand, the defendants say that the true rule of law is that which has been laid down in a number of cases by the Circuit Court of Appeals for the Sixth Circuit. They rely particularly upon Noonan v. Chester Park Athletic Club Company, 99 Fed. 90, 39 C. C. A. 426. Judges Taft, Lurton,- and Day sat in that case. One of them is now President of the United States and two of them are Justices of the Supreme Court. The opinion was delivered by the then Judge, now Mr. Justice, L/urton, who spoke for a unanimous court. He said:
“It seems to be well settled that the assignor of a patent is estopped from saying his patent is void for want of novelty or utility, or because anticipated by prior inventions. But this estoppel, for manifest reasons, does not prevent him from denying infringement. To determine such an issue, it is admissible to show the state of the art involved, that the court may see what the thing was which was assigned, and thus determine the primary or secondary character of the patent assigned, and the extent to which the doctrine of equivalents may be invoked against an infringer. The court will not assume against an assignor, and in favor of his assignee, anything more than that the invention presented a sufficient degree of utility and novelty to justify the issuance of the patent assigned, and will apply to the patent the same rule of construction, with this limitation, which would be applicable between the patentee and a stranger.”
The case of Noonan v. Chester Park Athletic Club Co. was decided some years before the Siemans-Halske Case. It was considered by the Circuit Court of Appeals for the Seventh Circuit in the latter case, but the judges who composed that court found themselves unable to adopt its reasoning. Nevertheless, when the question was again re-examined by the Circuit Court of Appeals for the Sixth Circuit several years after the decision in Siemans-Halske Case, the court for the Sixth Circuit adhered to its former ruling. Again, it spoke through the mouth of Judge Lurton. Babcock & Wilcox Co. v. Toledo Boiler Works, 170 Fed. 85, 95 C. C. A. 363. Before
There is nothing mysterious about the doctrine of estoppel. A man is estopped because in equity and good conscience he should not be allowed to say something, although that something may be true. Whether equity and good conscience require that he shall keep his mouth closed may and usually does in large part depend upon the special facts and circumstances. One who knew well the state of the art might sell' a patent to one who knew nothing about it. In order to make the sale,- he might read the claims to the buyer. He might comment on the breadth of their language. He might assert that he knew that they covered every possible machine by which the wished for result could he attained. Such a seller, I take it, when sued for the infringement of a patent he had sold, would not be permitted to set up the prior art for the purpose of showing that the patent was in fact a very narrow one; that it covered a limited class of machines only and that there were large classes of machines not covered by the patent which would accomplish substantially the same results. The circumstances under which a patent may be assigned may be quite different. An inventor may be in the employ of another. He may turn over his inventions to his employer. The employer may at his own expense prosecute applications for patents for such of these inventions as it may think valuable. When such employé subsequently changes his employment, there seems to be no reason why he should be any more estopped than any one else from showing that the patent he assigned, though valid, must be narrowly construed. The complainant says that there are special facts and circumstances in this case which should estop the defendants from limiting the claims sued on. The special facts and circumstances so alleged are two.
First. The making of the agreement of September 5, 1888, by which the defendant Whittingham agreed to assign to the Automatic Switch Company of Baltimore City all future inventions which he might make or which he might become interested in relating to electric switches. The present complainant is not the company with which Whittingham made the agreement of September, 1888. It is a new corporation to which has been assigned the property and rights of the company with which Whittingham made his agreement. It is unnecessary to inquire whether such a contract could be assigned without Whittinghani’s consent so as to bind him to the new company. This is not a suit for the specific performance of that contract. The agreement is brought into this case by Darrin’s testimony that before he bought the stock in the Automatic Switch Company of Baltimore City Whittingham showed him the agreement of September, 1888, and that the existence of this agreement was one of the inducements which led him to buy that stock.
If I were satisfied that this conversation or anything like it had in fact taken place, I might feel that Whittingham ought to be subject to
In view of these admissions, I do not feel justified in basing any decision upon his uncorroborated statement of representations made to him when the fact that such representations were so made is denied by the party alleged to have made them.
Second. Certain bulletins issued by the Automatic Switch Company of Baltimore City during the time Whittingham was connected with that company have been offered in evidence by the complainant. It is said, and not denied, that Whittingham assisted in their preparation. I cannot, however, find anything in those bulletins which make more rigid the estoppel to which the defendants should be subject in this case. I am therefore of the opinion that it is open to the defendants to assert that claim 8, being functional in form, must in any event be limited to the construction substantially identical with that shown in the patent in suit, and that, in order to determine whether the difference between the devices made by the defendants and the construction shown in the patent gre substantial or colorable, resort may be had to evidence of the state of the prior art.
The complainant apparently admits that claim 8 must be limited to the particular construction shown in the patent in suit or to some construction substantially identical therewith. In its brief filed in this cause it discusses claims 1 and 8 together, and assumes that 8 is not infringed unless 1 is. I believe that such construction is the proper one to place upon this claim. This is especially true in view of the statement of the patent itself that the invention consists is certain electrical and mechanical features of construction, arrangements, and combinations of the parts in the patent fully described and claimed. If this view be correct, the conclusion already reached that claim 1 is not infringed disposes of the contention that claim 8 is. In any event, claim 8 must be construed as limited by the prior state
I will' therefore sign a decree dissolving the preliminary injunction and dismissing the bill of complaint, with costs.