260 F. 187 | E.D. Pa. | 1919
From the viewpoint of the plaintiff this case presents the very simple features of a need for an improved ignition system in automobile construction where the current supply is limited; the meeting of that need by the patentee through the contrivance of the device described in the patent application, and its commercial appreciation and acceptance as the supply of that need.
From the viewpoint of the defendants this hardship is felt. The defendants, in the effort which they were making to improve the ignition system which they were supplying, were given by the prior art the thought of introducing a nickel resistance coil, and made use of this as. a feature of their improved system. This system had heen designed without thought of plaintiff’s system, and although it had been put in use for five years after application it was before the pat-entee’s device had been patented or heard of by the defendants. The defendants’ device, moreover, was designed and used in ignition systems in which the supply of current is not limited, but is renewed by means of an engine driven generator, and the resistance coil is not introduced for the purpose of stopping the flow of current, nor is a diminished current either desired or brought about in any real sense, as in plaintiff’s device. The defendants in consequence protest against the upholding of any claims of the patent so broad as to forbid tire use by others of “a tool of the art” as old and well known as “thermal resistance.” The plaintiff, of .course, repudiates any such claim, but, as the defendants obstruct the path of the patent claims only by the placement of a nickel coil, a finding of validity and infringement carries with it a denial of the right in any one, other than the patentee, to use'a coil of any metal which acts as “a high temperature coefficient” resistant. The disclosures of the patent, it is further asserted, are so vague and indefinite, and the claims so broad and general, as to be no more than the statement of a need of the art, and a suggestion of the use of a known property possessed by some metals (named and unnamed) to achieve the desired result, with an invitation to the user to “cut and try” until he has hit upon a combination by which the wished-for result may be accomplished. The reward held out is the gratification of having made a contribution to the exclusive proprietary rights of the patentee, through which he may exact tribute from the users of what is thus found.
From the viewpoint, of the public and of the promotion of the policy of the law the case presents, in. one of its features, a good illustration of the need of the most thoughtful care in the application of the patent laws, and of the extent to which the finding of patent rights is influenced by considerations of the general good and the particular situation to which the claimed invention applies. The monopoly is not given, but is granted for a price, and there is the same duty not to grant without exacting the price as there is not to withhold the grant if the price has been paid.
The inventive genius who strikes out into a wholly new field off exploration, and brings back a new art, the practice of which is added to the activities of mankind, has acquired rights in what he has discovered which are universally recognized. He is really a creator,
Before the advent of the patented improvement here involved objectionable, and what was believed to be avoidable, depletion of the current supply was experienced. Many minds were at work on the problem of finding a- remedy for this undue waste and the inconven-iencies which resulted. The contact points are brought together and separated in the engine operation. It might be that the stop was made when there was a juncture. The current would then continue to flow, resulting in pure \yaste. Remedies had been provided for this through a means for shutting off the current. Some had dependence upon the interposition of informed human effort. If through ignorance or neglect the switch was not thrown and the stoppage was prolonged, the battery was depleted. Others eliminated this undependable human element by means of automatically mechanically operating the cut-out. One now to be had makes use of this principle of thermal resistance to put in operation the mechanism which works the cutout. The patentee took up this same task of providing a device which would supplant, or at least supplement, the human agency by furnishing a Substitute when and if needed. The task was complicated (as the task of those who bring innovations into an established industry always is) by the practical necessity of catering to the preferences, and perhaps the prejudices, of those in the business, and the real need of making as few changes as possible in the established order of things. The patentee claims to have solved the problem by taking advantage through making use of a property, or quality which certain metals possess. The property is that when cold they will (relatively well) permit the flow of current through them; when and as they rise in temperature they will (relatively well) retard and prevent such flow. Having a conception of the thought of making use of this property, the next part of the problem was how to do it. There is always some resistance to the flow. This resistance spells friction, and the friction heat, and with the heat comes the higher temperature, which calls in a wire coil, if one is used, for the very conduct in the metal which is meant to be provoked. A wire coil of the selected metal is thus suggested to be introduced in the circuit, and the in- , tended result is claimed to be accomplished. This stoppage of the engine with the contact points in contact is defined by the patentee as a’“dwell.” There is,- of course, more or less of the same dwell whenever the points are in contact. The dwell is of appreciable length at slow.speed, and is a miniature dwell even at the highest speed. As a consequence this remedial device is operative when the engine is working as well as when it is stopped. When the engine is stopped, the more effective the prevention of flow the better the device; when the car is in motion, the remedy against waste of current may he so effective as to defeat its main purpose by preventing or retarding
It is doubtless true that this is nothing more than “making use of a well-known tool of the art.” It is also true that the device makes no very great call upon the inventive faculty. The invention is admittedly . open to the criticism that all its elements are old. The criticism is met by the stock rejoinder that the thing invented is none the less new. The essence of the invention is the use of this resistivity of certain metals. It is of no consequence that the patentee was not the first to discover that iron, nickel, and some other metals possess this property. He surely did not create it, and could not have monopolized its use had he been the first to discover and make it known. The simplicity of the embodied form of the idea does not touch the question. The conclusion cannot be resisted that, although the prior art was rich in the material out of which this improvement might have been made, it was not so made before Kettering unless Delano made it. The emphasis laid upon the Delano device, and the time, effort, and expense given to its production for the purposes of evidence, is persuasive of the fact that what was done was first done by Kettering or by Delano. The thought may seem now to have been within the easy reach of any one, but the fact that the need of such a device was felt, and that this device has received commercial appreciation, argues its advancement upon the prior art. This much must be conceded to the plaintiff on legal principles which reason deduces, and which the cases cited in plaintiff’s brief confirm. Westinghouse v. Dayton (C. C.) 106 Fed. 729; Miehle v. Whitlock, 223 Fed. 647, 139 C. C. A. 201; Æolian Co. v. Cunningham (D. C.) 251 Fed.. 301. _ ...
_ ... Viewing the patented device as one limited in function and field of operation wholly to conditions of “dwell,” we are met with a branch of the defense which malees inquiry into its patentable merits of no avail because the defendant’s device is averred not to infringe.
The thought presented is somewhat akin to the one later discussed, that an inventor is entitled to all which he has accomplished, whether he has fully grasped the scientific principles which the invention has brought into operation or not, or even if he has not appreciated the full scope and extent of his accomplishment. The doctrine, however, must be given a practical application. It gives to the patentee whatever he has invented, disclosed, and claimed.- It protects him against the use of equivalents. It does not, however, give him the exclusive right to what others may invent, even if the stimulus of the second invention was supplied by the success of his own, or even if his own invention suggested the effort which resulted in the second.
To constitute infringement of one device by the use of another, so far as the mode of operation is a factor the one must be such as to substantially embody the other; so far as results are a factor, they must be the sáme in kind, however they may differ in degree; so far as purpose and function, the application of the principle of construction, are factors, there must be substantial likeness in use. The patent laws do not deal with mere abstractions, but with things. There is no infringement in borrowing an inventive idea from one art and applying it in the construction of a device for use in another art. Use may be made of the same thought, and practically the same use may be made of it, but if the things the exclusive right to make, use, and vend which is granted to the first user are not the’ same as those made by the second user no conflict of rights arises. The test is not merely whether two things made are huilt on the same principle, but whether as things they are competitors. If we grant to this patentee the right to take from the common fund of knowledge this property of resistivity, and make use of it in the construction of an ignition
Toss of current is of course unavoidable. Just what saving a test of the plaintiff’s device would show we are not informed. We have on the one hand the claim of the patentee of what his device will accomplish, and on the other the result of the use of the defendant’s device. A test of defendant’s device shows a prolongation of the supply of current of from 31 hours 21 minutes to 39 hours 15 minutes. This saving indicates a utilization, as is argued, of some of the advantage which flows from the use of the patented device. This does not, however, prove infringement. The two systems have, it is true, this saving, to the extent indicated, in common, but they are not competitors, nor is the defendant’s system a substitute for that of the plaintiff. They have no substantial identity in purpose of accomplishment, and their likeness is more formal than real. To hold that one is an infringement of the other would make it necessary to hold that the defendant could not make use of a, “tool of the art” for one purpose because the plaintiff had first made use of it for another purpose, or to hold that a system designed and used for one purpose could not be used because it has something in common with another system designed and used for another purpose. The right given by the law is a monopoly of use and sale, and if there is no trespass upon this field there is no infringement. One practical test is that of commercial rivalry, and no one in search of a system to do what the plaintiff’s was designed to do (we are still speaking of the cutting off of the flow of current during “dwells”) would think of making use of defendant’s. Our finding is, with respect to this branch of the case, against infringement, and this renders it unnecessary to make any finding of validity.
The merits of this invention, however, are asserted to be, and the claims of the patent cover, more than a device to save current during dwells. There is the further thought of so proportioning the parts which enter into the construction of the wire circuit that the flow of current will be regulated during running conditions. It is objected that this merit feature of plaintiff’s system is an afterthought, not
We are not impressed by the stress laid upon the injunction of secrecy imposed by Delano upon those to whom he disclosed his invention. If the question were one of dedication by Delano to the public, the kind of use made by him of his invention would have a meaning. The question, however, is wholly different, as it is the one of whether Kettering was first with his invention. The argument addressed to us with the purpose of throwing doubt upon the fact of invention by Delano is forceful, and if the question was whether the witnesses Bishop or Sellek had any appreciation (before this case arose) of what Delano had invented with respect to the features of importance now, the argument would be convincing. We can, however, not justify a finding which ignores what the “box of tricks” discloses. The thing which was made, with the testimony of the man who made it, is persuasive of what was made. We cannot doubt the introduction by Delano of a resistance coil in the ignition circuit, and that it was of iron, and answered to all the purposes of coil 29 in the patented system. It is true that in another litigation involving other issues, and in which the question before us did not arise, Delano and the other witnesses failed to mention, in the descriptions given of what Delano had done, features which are now of the utmost importance. Here, again, if the question were not what Delano had done, but whether there was any clear appreciation of the fact that he had done what Kettering afterwards accomplished, there would at least be such doubt as would deny a finding of anticipation. The very doctrine, however, which had our approval when invoked in Kettering’s favor, that he was the inventor of what he had invented, whether he was alive to the full extent of its merits or not, applies as well to the Delano invention. It compels the conclusion that, if Delano contrived a system which was the same as that of Kettering, the latter was not the first inventor, although all which Delano had accomplished was not at the time appreciated. The use made of the Bishop system, and the •length of time it was in use, and the changes of ownership through which it passed, forbid a finding that the Delano inventive thought was merely an inchoate undeveloped experiment, abandoned before completion.
Our conclusion is that defendant is entitled to a decree dismissing the bill of complaint for want of equity, and awarding costs, and a decree to this effect may be submitted.