52 F. 300 | 2d Cir. | 1892
On January 27, 1880, under an application filed November 4, 1879, letters patent No. 223,898 were issued to Thomas A. Edison, and by subsequent assignments passed to the complainant. The four claims of the patent are as follows:
“(1) An electric lamp for giving light by incandescence, consisting of a filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth. (2) The combination of carbon filaments with a receiver made entirely of glass, and conductors passing through the glass, and from which receiver the air is exhausted, for the purposes set forth. (3) A carbon filament or strip coiled and connected to electric conductors so that only a portion of the surface of such carbon conductors shall be exposed for radiating light, as set forth. (4) The method herein described of securing the platina contact wires to the carbon filament, and carbonizing of the whole in a closed chamber, substantially as set forth.”
In the lamp made by defendant the carbon conductor is not coiled as indicated in the third claim, nor is it secured as indicated in the fourth, nor does complainant contend that either of these claims is infringed. The circuit court held that the first claim was by its phraseology limited to lamps in which (among other things) the leading-in wires are “secured to the filament according to the method of the patent, that is, by cement carbonized in situ,’' and that as defendant uses clamps for this purpose it does not infringe. This construction of the first claim has been acquiesced in by the complainant, which has not appealed from the decision. There remains for consideration only the second claim.
The defendant’s burner is of carbon, so small in cross section that, by the ordinary usage of common speech, it may be fairly called á “filament.” The receiver, which contains the burner, is made entirely of glass. The conductors, which connect with the burner, pass through the glass, and from the receiver the air is exhausted. Defendant contends, however, that the specifications of the patent and the prior state of the art require that this second claim be so limited in construction that defendant’s apparatus will not fall within its terms, and that, unless so limited, such claim is directly anticipated, or untenable as not involving patentable novelty.
The patent sets forth that “the object of the invention is to produce ■electric lamps giving light by incandescence, which lamps shall have high resistance, so as to allow of the practical subdivision of the electric light.” By the phrase “subdivision of the electric light” is meant such a subdivision of the electric current that at several illuminating foci, .supplied from the same source of electricity, there shall be developed lights of moderate intensity,—comparable to those given out by ordinary gas jets,—and the problem to be solved required a system and apparatus which would admit of the development of these moderate lights in sufficient number, and at so low a cost, as to be commercially useful.
Prior to 1879 experimenters seemed to have reached the conclusion that success was to be attained, if at all, by modifications of the arc lamp, but up to that time no lamp, arc or incandescent, had been given to the public, which, with the means then existing for generating and distributing the electric current, accomplished this result. Since the date of the patent in suit electric lighting by lights of moderate intensity has become a commercial success.- Subsequent improvements in the lamps and in other parts of the system have undoubtedly contributed materially to its development, but the record abundantly shows that with lamps such as the patent describes, constructed with the skill then known to the art,
Commercial and domestic exigencies required that the lamps should be so arranged that each derived its power independently from a common source, and not through another lamp, so that they could be individually lighted or extinguished at will, and the breaking down of a single lamp would not break the circuit. This is effected by what is called the “ multiple arc ” arrangement, the wires leading to and from each light being so connected with the main conductors as to form a separate circuit for each light. In this arrangement no greater electromotive force is required for a large number of translating devices than for a single one, the current being graduated to the number employed. The lower the resistance of each illuminating conductor, the greater the current it requires, and as their number is increased, their individual resistances remaining constant, the size of the main conductors must be likewise increased, an increase which, in the prior art, soon involved such an expense for main conductors as to preclude commercial success. The amount of heat developed by the passage of an electric current is greater as the flow of the current is greater. It is also greater as the resistance of the conductor is greater, and all electric conductors vary in resistance directly as their lengths and inversely as their cross sections. Conductors of different materials have also different specific resistances. The quantity of heat developed in a translating device is independent of, but the degree of heat (i. e., the temperature) is dependent on, the extent of radiating surface. In the lamp shown in the patent these laws are availed of; the ratios of resistance of the burner to the resistance of the entire circuit and to its own radiating surface being so graduated that a light of the required intensity is produced by the expenditure of so small an amount of current at each illuminant focus as to admit of main conductors sufficiently small, and therefore sufficiently low priced, to warrant the introduction of the system into public use.
It is not necessary to enter into any elaborate discussion of the prior state of the art, so far as it bears upon the question of the patentable novelty of such embodiment of the principle of high resistance and small radiating surface. Irrespective of all patents or publications of others, the philosophy of that method of producing light is undoubtedly found stated clearly and sufficiently, and applied to the production of an in
In his invention, as described in the French patent, Edison departed from the existing idea of burners of low resistance, declared the commercial and scientific necessity of burners of high resistance, although they must be slender and presumably fragile, and attempted to find a method of protecting them from the effects of heat and of the atmosphere. It is said that the theretofore known laws of electricity should have taught every one that an electrical incandescent lamp must have a burner of small cross section and small radiating surface. The electrical laws had been known and had been recognized, but they did not tell how to protect the materials which would make efficient burners from the destructive effect of other forces than electricity to which they must be subjected; in other words, they did not tell how to construct a lamp. Edison, in his French specification, followed the principle of high resistance to an extreme, made platinum burners with a resistance of 200 to 300 ohms, and described the method by which they were to be prevented from speedy deterioration, “ bj' destroying or intercepting the atmospheric action.” He freed them from occluded gases by subjecting them to a high degree‘of electrical heat in a vacuum, and subsequently sealed them also in a vacuum. The platinum lamp, however, did not achieve success.
Inasmuch as carbon has a specific resistance from two to four hundred times that of platinum, (hard, dense carbon having a lower resistance than porous carbon,) is practically infusible, had been long before
In June, 1878, and January, 1879, (United States patents 205,144, 211,262,) Sawyer and Man indicated one of the causes which operated to produce this disintegration of the carbon, viz., that “some oxygen or other element or compound remains in the lamp,” the carhon “occluding sufficient air or oxygen to render its consumption a mere question of time,” as “the least quantity of oxygen in a sealed lamp is sufficient to com-bust an indefinite quantity of carbon.” This they sought to remedy by heating the carbon pencils, immersed in a hydro-carbon liquid, to an extremely high temperature, thus producing a hard and dense carbon, and one whose specific resistance was lowered by that very process. They also, while the globe was on the pump, and nitrogen flowing in and out of it, heated the “carbon to incandescence, thus driving out all the impurities and occluded gases, which are carried out of the lamp by the current of nitrogen.” Believing that the deterioration of the carbon burner was due to the presence of occluded oxygen, which escaped into the sealed chamber and promoted “combustion,” they sought to secure stability by substituting for the oxygen they had forced out by heating on the pump an atmosphere of nitrogen. That done they sealed their chamber, which seems to have been a separable one.
Edison had experimented with carbon before he devised the platinum lamp of his French patent. Subsequently to the date of that patent, apparently because that lamp did not seem to promise the success he hoped for, he again turned to carbon. In the course of his investigations he made a discovery as to the causes of “disintegration,” of w'hich he availed himself to devise a lamp in which carbon, even in the filamentary form required for a burner, whose ratio of resistance to radiating surface was such as to apply the philosophy pointed out in his French patent,,could be maintained for a sufficient length of time to become a commercial success. At the date of the application for the French patent he had apparently reached only the point that “pencils [not filaments] of carbon can also be freed from air in this manner, and be brought to such a temperature that the carbon becomes pasty, and if it is then allowed to cool it is very homogeneous and hard. ” The knowledge that practical stability could be given to a carbon filament was not gained until October, 1879.
The patent in suit sets forth that theretofore “light by incandescence has been obtained from rods of carbon of one to four ohms resistance, placed in closed vessels, in which the atmospheric air has been replaced by gases that do not combine chemically with the carbon. The vessel holding the- burner has been composed of glass cemented to a metallic»
Although all-glass globes, with leading wires passing through the glass and sealed into it, had been used before to preserve the conditions of the interior of a chamber from the effects of leakage at the joints, and although the prior art, including the French patent, indicated that subdivision of the electric light was to be obtained by the use of burners of high resistance and small radiating surface, and although pencils of car
It is also true that the combination and manipulation which secured a practically perfect vacuum by heating the burner while the exhaust pump was at work, and subsequently sealing the globe without introducing a foreign gas, is set out by Edison -in his French patent as a means of effecting such a change in the condition of platinum as would permit of its being raised to higher temperatures without rupture, cracking, or diminution of weight by volatilization. But the evidence shows that the platinum lamp did not achieve success, and we think there was manifest invention in the substitution of carbon freed from occluded gases, and placed in a nearly perfect vacuum. The change of material involved a reorganization of the lamp. Dispensing with the thermal regulator, which was an essential part of the structure of the French patent, it developed new properties in the lamp by reason of the enormous differences between the resistances and the melting points of the two materials; it utilized the discovery of that cause (“air-washing”) of the instability of carbon, which seemed to preclude all hope of its future-usefulness as an incandescent illuminant. Finally and principally, by the substitution, there was presented the complete combination of elements, which for the first time in the art produced a practical electric light. We are of the opinion that on principle and under the authorities such a substitution of material is invention. Experts called for the defendant have testified that such change of material involved no invention, because the use, as a substitute for platinum, of carbon of any size, operated in a vacuum, would be obvious to one skilled in the art. To this proposition we cannot assent. Sawyer and Man were skilled in the art, but even after they had learned how to force out the occluded gases, and withdraw them from the lamp chamber, they turned away from the vacuum thus ready to their hands, feeling no doubt that they were following the teachings of the art in seeking stability by the use, not of a vacuum, but of a nitrogen atmosphere. Edison was skilled in
The second claim of the patent is broad enough in its phraseology to cover the invention above set forth, at least when the burner is a carbon filament. This last word is not specifically defined in the patent, though it therein appears for the first time in the art. It was a common English word with a meaning sufficiently plain to indicate that the cross section of any article which it was used to qualify must be so small as to be thread-like; and we think a sufficient indication of what that size is would be afforded by an examination of the ordinary threads in common use. An examination of the patent, however, indicates its dimensions with more exactness. It is to be fragile, so small in cross section that, compared with older carbon rods, its use is a “reversal” of former practice. One of the substances suggested in the patent to he used as a burner is to be reduced to .007 of an inch in diameter. Ordinary cotton thread, also suggested in the patent, has varying diameters, the largest in common use being l-64th of an inch. The patent-office model has a diameter of about l-66th of an inch. The evidence fails to satisfy us that the prior art furnished any burners less than twice this size. In contradistinction to these earlier burners, Edison calls his burner a “ filament.” The term is apt, and we do not think he was required to specify, by thousandths of an inch, its precise maximum and minimum. Surely no one could doubt that burners nearly approaching in size the examples of his filament, shown in the patent, would be filaments, nor that burners nearly approaching in size the earlier rod burners would be rods. The'defendant’s burners are smaller in cross section than the cotton thread of the patent-office model, and indisputably lie wholly on one side of the dividing line between rods and filaments, which, therefore, for the purposes of this suit, need be no more closely defined. The carbons which defendant operates in a high vacuum, in all-glass chambers with platinum -wires sealed in, and which by such method are not exposed to air washing, and are thus rendered practically stable, are filamentary in size, and therefore filaments, within the meaning of the second claim, unless that word is to be qualified as defendant suggests. That it is to be so qualified by importing into it a “coiling” of the burner is unwarranted in view of the fact that the patent refers to both coiled and uncoiled threads, and the third claim specifically covers the coiled form. The first claim is the comprehensive one, intended to include—and by its use of the words, “made as described,” in fact including—the principal invention, as the draughtsman understood it, to wit, the burner, which was to subdivide the electric light by its ratio of resistance to radiating surface, and also the subsidiary inventions (1) of coiling when desired, either as effecting that ratio or as a protection against flickering; (2) of securing the burner to the wires; and (3) of providing a place for its operation, to wit, the ex
This conclusion seems plainly indicated by the peculiar phraseology of the claim. It is for “the combination of carbon filaments with a receiver made entirely of glass, etc., and from which the air is exhausted, for the purposes set forth;” that is, for the purpose of preventing the disintegration of the burner resulting from air washing. All the experts and all the counsel agree that the words “carbon filaments” should read “a carbon filament,” because the combination of the patent contemplated only the incandescence of a single filament in each lamp. This is quite correct, but the words thus altered found their place in the claim through no mere clerical error. Inapt though they may be to describe the individual concrete combinations which were to be protected against infringement, they are illuminative of the effort of the draughtsman to secure his exhausted all-glass receivers in combination with carbon filaments of all kinds, and he used the plural, omitting the phrases “of high resistance” and “made as described,” used in the first claim, in order to make sure that he should not, as to this second claim, be confined by construction to any one variety of filament. For this reason the further limitations, which defendant seeks to read into this claim, viz., that the filament must be one of high specific resistance, or of at least 100 ohms resistance, cannot be accepted.
The second claim may be thus paraphrased: The combination of carbon, filamentary or thread-like in size, and properly carbonized, used as an illuminant in an incandescent electric lamp with a receiver made entirely of glass, and from which receiver the air is exhausted to such an extent that disintegration of the carbon due to the air-washing action of surrounding gases or to any other cause is so far reduced as to leave the carbon practically stable. Defendant’s lamps are plainly infringements of the second claim as thus construed.
Defendant further contends that the patent is invalid because it does not so describe the lamp as to enable a person, skilled in the art at the date of the patent, to make a practically useful structure. The evidence of the witness Howell seems to us a conclusive answer to this contention. He made, as he testifies, according to the directions of the patent, and using only processes known to the art before its date, incandescent lamps such as the patent describes, which lasted 600 hours. Defendant criticizes this evidence, because the witness subjected the filaments made by him to the action of the electric current during the process of exhaustion.
The other defenses interposed by defendant may be more briefly noticed. The patent in suit was issued January 27, 1880. A patent for the same invention was issued in Canada, November 17,1879, (No. 10,-654,) the term of which, expressed on its face, was five years; but the Canadian statute gave to the owner of the patent the right to an extension at his option, on the payment of a required fee, for the further period of 10 years. On May 4, 1883, the owner paid the fee required, and on October 30,1883, obtained certificate of extension. In Bate Refrigerating Co. v. Hammond, 129 U. S. 164, 9 Sup. Ct. Rep. 225, it was held that, so far as the term of a Canadian statute operated to curtail the term of the United States patent under section 4887, Rev. St. U. S., it should be regarded as a continuous term for the entire period. It appears, however, that on March 5, 1880, a patent for the same invention was granted in Sweden, the grantee of which subsequently failed to prove, as required by the law of that country, that the invention was “being constantly practiced within the kingdom” Thereupon, on March 5, 1883, the Swedish patent right was lost and forfeited. Defendant
“An inventor shall not be entitled to a patent for his invention if a patent therefor in any other country shall have been in existence in such country more than twelve months prior to the application for such patent in Canada; and if during such twelve months any person shall have commenced to manufacture in Canada the article for which such patent is afterwards obtained, such person shall continue to have the right to manufacture and sell such article notwithstanding such patent; and under any circumstances, when a foreign patent exists, the Canadian patent shall expire at the earliest date at which any foreign patent for the same invention expires.”
The soundness of the defendant’s contention depends on- the meaning, under Canadian law, of the phrase “where a foreign patent exists,” as used in this statute. If that phrase is confined to foreign patents which exist before the relevant Canadian patent is issued, the loss and forfeiture of the Swedish patent right in no way affected the Canadian patent to Edison. The meaning of this phrase has not been declared by the Canadian courts, but a careful examination of the evidence given by the Canadian lawyers who have testified as to its practical construction by the Canadian government, and have given their professional opinions as to its meaning in Canadian law, satisfies us that it is there used as covering only foreign patents which exist before the issue of the relevant Canadian patent. We are of opinion, therefore, that neither directly (Pohl v. Brewing Co., 134 U. S. 381, 10 Sup. Ct. Rep. 577) nor indirectly, through the Canadian patent, is the patent in suit affected by what happened to the Swedish patent.
The failure to limit the patent in suit on its face to a shorter term than 17 years, so as to expire at the same time with the prior foreign patent having the shortest term, does not affect its validity. Bate Refrigerating Co. v. Hammond, 129 U. S. 151, 9 Sup. Ct. Rep. 225. Nor do we think that validity is in any was affected by the attempted certificate of correction. The patent, as originally issued, being in every respect a regularly executed document, and the statute providing for no subsequent alteration thereof by the patent office, (except in cases of reissue, which this is not,) the action of the commissioner in indorsing it with an attempted “correction” was without jurisdiction, and wholly void. And in the absence of any provision of law contemplating the surrender of an original patent by the grantee or holder, 'except for reissue, we cannot find, in the request to have such unauthorized correction made, any reason for holding that the patent was by that act surrendered.
“No suit, action, or proceeding then pending before any court or tribunal, in which any corporation that may be so consolidated is a party, or in which any such stockholder is a party, shall be deemed to have abated or been discontinued by reason of any such consolidation; but the same may be prosecuted to final judgment in the same manner as if the said corporations had not entered into the said agreement of consolidation; or the said new corporation may be substituted, ” etc.
The state, by this act, expressly avoided interfering with the continued exercise of the artificial person’s functions as a litigant in cases when such functions were already in use. Therefore, being properly a party litigant in the suit before consolidation, it would remain so afterwards, not because the state statute is operative to regulate the practice and procedure of federal courts in equity suits, but because, so far as the litigant life of the artificial person (properly a party to the suit when brought) is concerned, "there has been no change, the only power which could destroy it having scrupulous^ refrained from doing so. As by the consolidation all the property and rights of the old company were transferred to and vested in the new, (Consolidated Act, supra, § 5,) and the new company succeeded to all the obligations and liabilities of the old one, the fruits of any recovery belong to the new company, and the provisions of an adverse judgment can be enforced only against it. The survival for purposes of pending suits is therefore merely nominal, but that is no anomaly; provisions of law allowing personal representatives to continue suits in the name of the original party after his death are common.
Nor do we find any bar to the maintenance of this suit in the provisions of section 4898, Rev. St. U. S., that “ every patent or interest therein shall be assignable in law by an instrument in writing. ” Whether the bare legal title to the patent in suit passes with all beneficial interest
The decree of the circuit court is therefore affirmed, with costs.