38 F. 117 | U.S. Circuit Court for the District of Southern New York | 1889
This is an action for the infringement of four letters patent, owned by the complainant, for improvements in secondary electrical batteries. One of these, No. 266,262, granted to Shaw and Rogers, October 17, 1882, has been withdrawn from the consideration of the court. The three in controversy are No. 252,002, granted January 8, 1882, to Camille Alphonse Faure; and Nos. 312,599 and 318,828, granted, respectively, February 17, and May 26, 1885, to Joseph Wilson Swan. The invention of Faure relates to that class of batteries which give no electricity of themselves, and are active only when rendered so by sending a current through them from an independent source of electric energy; batteries which, being included for a time in a circuit generated from an ordinary galvanic battery, for example, become charged so that they subsequently give out electricity on the completion of a proper circuit.
“(1) As an improvement in secondary batteries, an electrode consisting of a support coated on one or more faces with an active layer of absorptive substance, such as metal or metallic compound applied thereto in the described condition, so as to be or instantly become spongy, and thus capable of receiving and discharging electricity, as stated, in contradistinction to a metallic plate itself rendered spongy by the disintegrating action of electricity, substantially as and for the purpose set forth.”
“(4) In a secondary battery, a series of cells, comprising each a pair of electrodes with an active spongy layer thereon, combined with non-porous partitions between adjacent cells, substantially as and for the purpose set forth.”
The general defense is want of novelty, which is subdivided as follows: First, prior use; second, anticipation in prior patents and publications; third, public use more than two years prior to the application; fourth, lack of invention; fifth, the claims are too broad, and include well-known prior inventions; sixth, .the patent is ambiguous, and misleading, and does not point out the' inventions; seventh, the original application was unlawfully expanded by amendments. Non-infringement of the fourth claim, if construed to mean that the electrodes must be applied to the partitions, is also alleged.
That the language of the patent is ambiguous, and especially so as it relates to the first claim, seems to be conceded on all hands. If other proof were needed that it is not written in the most perspicuous language, it will be found in the fact that the record contains nearly 2,000 pages, the greater part of which, as well as of the briefs, which aggregate 41L pages, is devoted to an effort to ascertain its meaning, — an effort which has hardly crystalized into a demonstration upon any one of the points in controversy. ■ «
In construing the first claim it should be remembered that it is limited to an improvement upon the well-known batteries of Gaston Planté, .who was the creator of practical secondary batteries. The art began with him. A secondary battery, as distinguished from a primary battery, is, there
The claim further provides “for an electrode consisting of a support coated,” etc. It is insisted that by a necessary implication the claim is limited to the use of two similar electrodes. • The argument in support of this theory is ingenious, but it is answered by the plain language oí the claim. An electrode cannot mean two electrodes. Had the patentee thought otherwise he would hardly have used the words “a pair of electrodes,” in the fourth claim. The French patent, the file-wrapper, and the patent in suit all demonstrate that the .patentee had his attention sharply drawn to the distinction between one electrode and two electrodes, and that he deliberately and intentionally claimed the former. He must abide by his decision. Sutter v. Robinson, 119 U. S. 530, 541, 7 Sup. Ct. Rep. 376; Shepard v. Carrigan, 116 U. S. 593, 6 Sup. Ct. Rep. 493; Roemer v. Peddie, 27 Fed. Rep. 702; Caster Co. v. Spiegel, 26 Fed. Rep. 272. A secondary battery, therefore, containing one Faure electrode Would be within the claim, although the other electrode were dissimilar, provided the two operate to receive and discharge electricity as stated in the specification.
The plates may be of metal, (lead, for instance,) or of a non-metallic substance, (carbon, for instance,) coated on one or more faces with an active layer of absorptive substance, which may be “metal, metallic oxide, or salt, which layer is or at once becomes porous or spongy.” The porous coating may be of lead or-any of the salts of lead. Metallic compounds, as well as metals, may be used. Preference is expressed for spongy lead, but other coatings are included. “This active material may be applied in various ways, so as to obtain a layer of the desired
“ The oxides or salts of lead not soluble in the electrolytic liquid are deemed the most advantageous for covering tho supports of the electrodes. The invention is not, however, limited to these, but includes generally substances capable of absorbing and storing electric energy in the manner described; for example, manganese, or any salt the oxide of whose base is insoluble. ”
It now becomes necessary to ascertain whether the invention, as so described, is anticipated or rendered void for want of patentable novelty by anything disclosed in the prior art, and, if so, whether the real invention of Faure can be saved by a disclaimer of non-essential features inadvertently inserted in the specification. The defendants have introduced an immense number of exhibits, which show the stead}' evolution in batteries, both secondary and primary. As to a vast majority of these it is not pretended that they anticipate. They may be interesting from a scientific standing-point, but they shed little light upon the issues in controversy, and rather tend to confuse them. In order to determine who shall be rewarded in the race for invention it is not essential to note
The article from the Electrician of 1863 is entitled “Secondary Batteries.” The writer, after describing a battery charged from an independent source, and which contains a couple like Plante’s, except that the positive element is of zinc, instead of leads, says:
“We have by preference employed for the primary battery a few Danieil's cells, which, although much less rapid in their action than the Bunsen cells, suffice for the production of the peroxide of lead, on which the efficiency of this secondary battery depends. The great power of the secondary combinations we have referred to is due to the presence of the peroxide of lead in contact with the negative elements in these combinations. ”
The writer then describes a negative element of platinum or lead, surrounded by a mixture of dilute sulphuric acid and peroxide of lead, and a positive element of amalgamated zinc in dilute sulphuric acid. He says further:
“By the action of a battery of any kind, provided the tension or electric motive force be sufficient, we may readily obtain a secondary couple, or any number of secondary couples constituted therein upon the principle of Grove or according to the plan of De la Rive, of using the peroxide of lead instead of nitric acid. Such secondary couples may be capable of remaining in action only for a few minutes, or for very much longer space of time, according to the period which they are charged by means of the primary battery.”
The plan of De la Rive, referred to, describes as an electrode for a primary battery a thin plate of platinum placed in a porous pot, with a powder of peroxide of lead, and, in some instances, the peroxide of manganese, packed around it. This arrangement is quite similar to the negative electrode of Leclanché’s United States patent, Ho. 165,152, and to the Eaure electrode shoivn in Fig. 2 of his drawings. In fact, if the other electrode shown in this figure were amalgamated zinc instead of “a piece of lead with its inner face covered by apaste of sulphate of lead,” the analog]’' would he well-nigh perfect. The difficulty with the article as an anticipation seems to bo that there is no pretense that in charging the battery therein mentioned “the electricity acts to produce a reduced mass of porous lead on one electrode, and a mass of peroxide of lead on the other.” To one not versed in electrical science the operation described in the Electrician would seem.to differ hut little from the act of restoring a cell of De la Rive or Leclanché by the application of a current from an external source sent through it in an inverse direction. The article is not illustrated by drawings, the descriptions are somewhat vague and general, and there is no evidence that a successful secondary battery having the characteristics mentioned was ever made; on the contrary, structures quite similar were proved to be inoperative and valueless. It would seem that the article “ relates to that class of batteries which give electricity of themselves.” A person skilled in the art, after reading it, would not be able to construct a Faure battery in any of its
The report of the Smithsonian Institution for 1856 describes a secondary battery of any number of platinum plates containing a current of far greater electro-motive force than that of the charging battery. The plates were platinized, — that is, platinum black had been deposited thereon electrolytically, producing a microscopical film of finely divided platinum of a thickness “not far from the hundredth part of the thickness of a sheet of thin paper.” Though the operator obtained a'better result with the plates thus coated than when they were bright, he seems to have been oblivious as to the reason therefor. The gas battery of Mr. Grove was made with two strips of platinum, covered by glass tubes holding oxygen and hydrogen gas, respectively. These strips were plat-inized, and the platinized metal formed with amalgamated zinc into a battery. Kirchhof’s United States patent, No. 31,545, describes a battery, each cell of which contains a pair of platinum electrodes. The cells are glass cups, filled with a solution of the salts of lead. Upon being connected with a charging battery, “the negative electrode will turn black peroxide of lead, and the positive electrode will be surrounded by crystalized lead. This is a very positive element, and the former (peroxide) the most negative known to exist, and also a good conductor. By changing the proportions of the substances of the solution, more or less peroxide of metal will be deposited, and the conducting power, etc., may be increased or decreased in the same ratio.” This would seem to describe a secondary battery with two initially similar platinum plates, both coated by the charging current with a layer of active material. The criticism of this" reference is that it shows a battery which, in the initial state, before charging, has no coating of any kind on the plates. The coatings are produced out of, and at the expense of, the battery fluid, and as the gradual and slow result of charging. But this criticism loses sight of the statement of the patent that the active layer may be deposited by galvanic action. Planté, too, described, in 1872, his attempts to produce a thicker layer of peroxide of lead by galvanic deposit at the expense of the liquid. He says:
“If we make use of alkaline solutions, the lead is deposited in a spongy form, which increases rapidly in volume, and presents an analogous inconvenience to the one just given. Further, the peroxide of lead once deposited is not attacked when immersed in the alkaline solution, as it is in water acidulated by sulphuric acid, so that there is obtained under these circumstances only a very feeble secondary current. I have therefore thus far limited myself to the employment of water acidulated with one-tenth of sulphuric acid, which has always furnished by its action upon the peroxide of lead a secondary current superior in intensity to that of all other combinations, either acid or alkaline. ”
The idea of Percival, also, as shown in his United States patent, No. 53,668, was to improve on Planté’s method by saving time and expense. He describes a secondary battery consisting of one pair of electrodes jilaced in a water-tight wooden box, divided in its center by a porous partition. On each side of this partition is a layer of powdered
Regarding the prior use sworn to by Prof. Van der Weyde, it must be held that upon his testimony alone the court would not be justified in overthrowing the patent. The granting of a patent raises a strong presumption of novelty. Clear and convincing proof must be advanced to offset it. Proof which leaves the mind in doubt, or evenly balanced upon the question, is not enough. It is permissible for the court to reject the evidence, unless it is of such a character as to remove uncertainty and doubt. Coffin v. Ogden, 18 Wall. 120; Wood v. Mill Co., 4 Fish. Pat. Cas. 550; Howe v. Underwood, 1 Fish. Pat. Cas. 160; Loom Co. v. Higgins, 4 Ban. & A. 88. In the present instance the witness testifies to what occurred 14 and 25 years ago. He is a man of great learning and research. Though visionary, and a confessed theorist, he is restless, energetic, and untiring in his labors “in the dark and profound mine” of science. During the period between his alleged discovery and his testimony the subjects that occupied his attention were numberless. As an illustration, he testifies that during these years he took out more than 80 patents and wrote at least 5,000 articles on scientific subjects. That such a man, with his attention engrossed to such a phenomenal extent, should be able to recall with perfect accuracy experiments and results made and reached by him nearly a quarter of a century ago seems amazing. He may be mistaken; he may have confused experiments unintentionally; he may have exaggerated results. All this is possible, if not probable. In some matters his statements are clearly shown to be inaccurate. He is wholly uncorroborated. He asserts that his attention was called to the subject by reading in a foreign publication in 1864 an article which practically anticipated Faure. No such publication is produced, and it is hardly possible that it could have existed. He was therefore referring to something which he saw after the Fa.ure invention, or he entirely misconceived the purport of the article. If he were the author of the great improvement made practical by Faure it is surely remarkable that he should have allowed the secret to perish. If he did not consider it of sufficient value to make it the subject of a patent, it would seem at least that he might have mentioned the fact in one of his 5,000 publications. There is not a reported case where, upon such proof, unsupported by other evidence, a patent has been overthrown. In the Telephone Cases,
“The defendants have not shown that the invention was complete and capable of producing the result sought to be accomplished. * * * The thing was inchoate, and rested in, experiment. The process pursued for its development failed to reach the point of consummation. However nearly Otto approximated to the end in view, he only made progress. The world derived no benefit from what he did. The recollection of it was stimulated by the success of De Quillfeldt’s invention. But for that, Otto’s structure would have still been reposing in the old trunk beneath the stairs, forgotten and worthless. ”
In Adams v. Jones, 1 Fish. Pat. Cas. 527, the court, at page 531, says:
“It is only when some person, by labor and perseverance, has been successful in perfecting some valuable manufacture, by ingenious improvements, and labor-saving devices, that their patents are sought to be annulled by digging up some useless, rusty, forgotten contrivances of unsuccessful experimenters. ”
See, also, Putnam v. Vom Hofe, 19 Blatchf. 63, 6 Fed. Rep. 897; Gayler v. Wilder, 10 How. 477; Hall v. Bird, 6 Blatchf. 438; Tilghman v. Proctor, 102 U. S. 707; Andrews v. Carman, 13 Blatchf. 307; Hieles v. Otto, 22 Blatchf. 94, 19 Fed. Rep. 749; Clough v. Gilbert, 106 U. S. 166, 1 Sup. Ct. Rep. 188; Walk. Pat. § 86.
'The evidence of prior invention by Charles F. Brush is no'w to be considered. In determining this question, Faure, being at that time a citizen of France, is not permitted to claim the invention earlier than the date of his French patent, which was October 20, 1880, and, possibly,
In many important features of his testimony he is corroborated by the evidence of three witnesses who were present, and saw many of the
It therefore becomes apparent that the combination of the first claim, construed, as it must be construed under the loose and inaccurate language of tlie specification, is anticipated in every form in which the active layer can he applied, save one, namely, in tlie form of a paint, paste, or cement. The question now to be considered is, can the patent be saved to this extent? The application in the form of a paint, paste, or cement was the real invention which Faure made. It was in this form that he gave it practical embodiment; it was this that the scientific world understood to be bis improvement. An electrode for a secondary battery, with the active layer applied in this form, has many undoubted advantages over an electrode otherwise coated. It can be applied more evenly; it more readily adheres to the support; it does not shift its position; it “will also pack more closely and readily, and make an adherent layer from which air can be thoroughly excluded, so that uniform contact with the
“I knew the Plantó secondary battery prior to 1880. Faure’s invention was a very great improvement on it; so great as to produce a valuable apparatus for large practical work, instead of merely an interesting and instructive scientific instrument, which Planté’s secondary battery was.”
It does not appear that Sir William Thomson had the Faure patent before him, but he considered that—
“Faure’s invention was the application to two plates — preferably lead plates • — of a thin layer of oxide of lead, mechanically applied prior to placing the plates in the battery fluid; the plates and their coatings being insoluble in the battery fluid, and the coatings becoming so altered by the charging current as to become capable of yielding a reverse current, and this, over and over again, an indefinite number of times. I consider the novelty of Faure’s invention to be the application of the oxide of lead to the lead plates before passing an electric current through them, and the rendering of these coatings active by immersing them in the battery liquid, and passing the charging current through them.”
Professor Barker, the expert witness for the defendants, says:
“To Mr. Faure was due, in my judgment, all the credit which accrued by producing the porous or spongy metallic layer by the method of applying a layer of active material prior to commencing to charge the battery over that due to Plantó for producing substantially the same result by the method of disintegration.”
And, again:
“I think an electrode formed mechanically would have an advantage of construction in most, if not all, cases over an electrode electrolytieally coated. ”
Professor Van der Weyde says:
“I am of the opinion that there are three inventions which are of leading, supreme, and equal importance in the construction of a successful storage or secondary battery, to-wit: (1) The mechanical application of a previously prepared compound or paste of the active material; (2) the securing of such material to the plate or support by means of recesses in the plate which it entered; and (3) the use of an inoxidizable plate or support.”.
Mr. Vansize, an expert witness for the complainant, says:
“Faure made a discovery which threw additional light on the art of making commercially successful secondary batteries. As the specification states, he was familiar with Plantó’s battery, and with its degree of effectiveness, but to just what that effectiveness or superiority was due does not appear to have been known prior to Faure’s invention. Faure discovered that the efficiency of Planté’s battery was due to the use of finely divided spongy lead as a positive element, and his invention is embodied, and the discovery outlined, in the first claim of the patent.”
The inventor himself says of his earliest experiments:
“I took two plates of lead about two and a half inches wide; covered each plate on one side with a paste of litharge, etc. * * * I do not claim to*133 have invented spongy lead, but I boast of being the first that produced it in large quantity on the electrode of a battery, and the first to recognize it as an efficient element of a secondary battery.”
It is, then, established with reasonable certainty that the discovery of a mechanically applied layer of lead or like substance insoluble in the electrolyte, and placed upon the supports in the form of a paste, paint, or cement prior to their immersion in the battery fluid, so as instantly to become porous, and capable of receiving and discharging electricity, was one of great merit. There is no doubt, either, that Faure was the first to make this discovery. Can he hold the fruits of his genius, or must the court decide that in attempting, through mistake or ignorance of what had previously been accomplished, to grasp more than he was fairly entitled to, he has lost what actually belonged to him? Believing that Faure is an inventor of more than usual merit, it can readily be in-feired that the court enters upon this inquiry with every disposition to give him the benefit of his actual invention, if possible to do so under the law.
The proof establishes two propositions with equal clearness: First, Faure was the inventor of a secondary battery electrode coated in the manner stated; and, second, he was not the inventor of an electrode otherwise coated. If, by means of a disclaimer, the patent can be restricted to the actual invention, this course should, in fairness, be adopted. Section 4922 of the Revised Statutes provides that—
“Whenever, through inadvertence, accident, or mistake, and without any willful default or intent to defraud or mislead the public, a patentee has, in his specification, claimed to be the original and first inventor or discoverer of any material or substantial part of the thing patented, of which he was not the original and first inventor or discoverer, every such patentee, his executors, * * * and assigns, * * * may maintain a suit at law or in equity, for the infringement of any part thereof, which was Iona fide his own, if it is a material and substantial part of the thing patented, and definitely distinguishable from the parts claimed without right, notwithstanding the specifications may embrace more than that of which the patentee was the first inventor or discoverer. But in every such case in which a judgment or decree shall be rendered for the plaintiff no costs shall be recovered unless the proper disclaimer has been entered at the patent-office before the commencement of the suit. But no patentee shall be entitled to the benefits of this section if he has unreasonably neglected or delayed to enter a disclaimer.”
Section 4917 provides as follows :
“ Whenever, through inadvertence, accident, or mistake, and without any fraudulent or deceptive intention, a patentee has claimed more than that of which he was the original or first inventor or discoverer, his patent shall be valid for all that pari which is truly and justly his own, provided the same is a material or substantial part of the thing patented; and any such patentee, his heirs or assigns, * * * may, on payment of the fee required bylaw, make disclaimer of such parts of the thing patented as he shall not choose to claim or to hold by virtue of the patent or assignment, stating therein the extent of his interest in such patent. Such disclaimer shall be in writing, * * * and it shall thereafter be- considered as part of the original specification. * * * But no such disclaimer shall affect any action pending at the time*134 of its being filed, except so far as may relate to the question of unreasonable neglect or delay in filing it.”
Mr. Walker, in his work on Patents, at section 193, has blended these two sections in one comprehensive and perspicuous explanation. He says, (section 194 et aeq.:)
“The primary fact which brings the law into play is the claiming by a pat-entee of materially more than that of which he was the first inventor. Such errors may spring from inadvertence; that is to say, they may spring from failure on the part of the Avriter of the claims to exercise proper care in penning them. So, also, they may arise from accident, from chances against which even diligent care cannot always guard. But mistake is the most common source of such errors; and such errors may arise from mistake of fact or from mistake of law. * * * If the patentee is willing to eliminate fiom his claims everything'which later information shows had been invented before him, he ought to be allowed to retain his exclusive right to the residue. * ’* * There are cases where two or more inventions are covered by one claim, and in such cases a disclaimer may be made to expunge one of those inventions from that claim, without disturbing the others.”
Mr. Curtis says:
“Specifications may also be amended by another process, — that of filing a disclaimer, — whenever through inadvertency, accident, or mistake the original claim was too broad, claiming more than that of which the patentee was the original or first inventor, provided some material and substantial part of the thing patented is justly and truly his own., * * * In Seed v. Higgins, 8 3 El. & Bl. 755, 771, the patentee * * * entered a disclaimer, declaring: ‘ For the reason aforesaid I do hereby disclaim all application of the law or principle of centrifugal force as being part of my invention, or comprised in my claim, except only the application of centrifugal force by means of a weight acting upon a presser, so as to cause it to press against the bobbin, as described in said specification.’ It was held by the court of Queen’s Bench, and affirmed by the Exchequer Chamber, that this disclaimer was valid, and that, the original specification being read in connection with it, the result was a claim for only the machine particularly described. ” Curt. Pat. §§ 267, 286.
In Aiken v. Dolan, 3 Fish. Pat. Cas. 197, the patent was for an improvement in knitting needles, and the proof showed that the patentee was the first inventor of an improved'latch needle with a curved elevation which was highest at the middle of the groove, and with such a corresponding elevation of the pivot that the end of the latch was depressed when it fell back at that extremity of the groove where the latch of the primitive needle had projected upwards. The claim was as follows :
“What I claim as my invention, and desire to secure by letters patent, is the application of a latch or tongue applied to the hook of the needle and operated as herein described. ”
The court says, (pages 206, 207:)
“But when the actual invention is thus referred to this improvement alone, the claim in the specification is too broad. It states that the invention consists in the application of the latch or tongue in connection with the hook of the needle, sweeping freely back and forth upon the center pin. The general operation of a latch needle is described, without any specific restriction to the form represented in the drawings. * * * The patent is therefore broader*135 than the actual novelty of the invention. By a proper disclaimer of the invention of latch needles without any such curvature, the patent would, however, be sustainable for the actual improvement.”
In Myers v. Frame, 8 Blatchf. 446, the claim was for “the employment or uso of the deflecting plates, E, E,' one or both,” etc. Judge Blatchford held that—
“The disclaimer of the use of only one deflecting plate with the saw, and the limitation thereby of the liist claim to the use of the two deflecting plates with the saw, was proper, and the disclaimer was in proper form.”
In Taylor v. Archer, Id. 315, the claim was for “the use and application of glue, or glue composition, in the tubing, substantially as described, for the purpose of making the flexible tubing gas-tight, whether of cloth, or rubber, or other gum.” A disclaimer, filed pendente lite, of that part of the claim “which claims, as an improvement in flexible tubing for illuminating gas, the use and application of glue, thereby limiting the claim to the use and application of glue composition in the tubing, substantially as described,” was held io be valid.
In Tuck v. Bramhill, 6 Blatchf. 95, the claim was for “the forming of packing lor pistons of steam-engines, either in connection with an India-rubber core or without.” It was held that the claim was equivalent to two separate claims, — one for the forming of the roll with the core, and another for the forming of the roll without the core; that the former was new, but the latter was old; and the patentee had a right to disclaim what was old and retain what was new.
In Schillinger v. Gunther, 17 Blatchf. 66, it was held that a disclaimer which took out of the patent so much thereof as claimed a concrete pavement made of plastic material laid in detached blocks or sections, without interposing anything between their joints in the process of formation, and which limited the claim to sucli a pavement when free joints were made between the blocks by interposing tar paper, or its equivalent, was good. It was held further, that it was not improper, in connection with a disclaimer of a claim, to eliminate or withdraw by the same instrument the parts of the body of the specification on which the disclaimed claim, or part of a claim, is founded. See, also, Schillinger v. Gunther, 14 Blatchf. 152.
In Roemer v. Neumann, 26 Fed. Rep. 102, the patent, for a lock, was held void for want of novelty, on the ground that it could not be limited so as to include in the claim certain notches in the end-pieces. The court said:
“There is no reference, in terms, either in the specification or the claim, to notches or recesses in the end-pieces. The drawings, however, show the end-pieces formed with notches or recesses, and the patentee incidentally refers to a use to which the end-pieces may be applied in which, inferentially, the notches or recesses would be necessary. This falls far short of making the notches or recesses an essential feature of the invention. It cannot bo doubted that the reference in the specification is to be treated merely as rec-ommendatory of a form of lock-plate for a specified use, such as is shown in the drawing.”
“Such a disclaimer as has been entered in this case is sanctioned by the case of Schillinger. v. Gunther, 17 Blatchf. 66. The case of Hailes v. Stove Co., 16 Fed. Rep. 240, is not analogous in its facts.”
In Libbey v. Glass Co., 26 Fed. Rep. 757, the court says:
“ The claims of the patent are as broad as the specification, and are not limited to any particular compound. Since bringing suit the plaintiff has filed a disclaimer under the statute, in which he limits his claim to the gold-ruby compound. This-the plaintiff had aright to "do. Under the authorities cited by the plaintiff this was a patent where a part could be properly disclaimed. It did' not require the importation of anything new into the specification, but simply the elimination of a part of what was originally claimed. ”
See, also, Silsby v. Foote, 20 How. 386; Hall v. Wiles, 2 Blatchf. 194, 198; O’Reilly v. Morse, 15 How. 62, 121; McCormick v. Seymour, 3 Blatchf. 209, 222; Seymour v. McCormick, 19 How. 96, 106; Singer v. Walmsley, 1 Fish. Pat. Cas. 558, 574; Clock Co. v. Clock Co., 4 Ban. & A. 121; Christman v. Rumsey, 17 Blatchf. 148, 160; Coburn v. Schroeder, 19 Blatchf., 377, 380, 8 Fed. Rep. 519; Burdett v. Estey, 19 Blatchf. 1, 7, 3 Fed. Rep. 566; Manufacturing Co. v. Manufacturing Co., 8 Fed. Rep. 608, 610; Tyler v. Galloway, 20 Blatchf., 445, 447, 12 Fed. Rep. 567; Gage v. Herring, 107 U. S. 640, 646, 2 Sup. Ct. Rep. 819; Brush v. Condit, 22 Blatchf. 246, 254, 20 Fed. Rep. 826; Matthews v. Spangenberg, 20 Blatchf., 482, 19 Fed. Rep. 823; Sessions v. Romadka, 21 Fed. Rep. 124; Dunbar v. Myers, 94 U. S. 187; Cartridge Co. v. Cartridge Co., 112 U. S. 624, 5 Sup. Ct. Rep. 475.
The law, as established by the foregoing authorities, permits the-complainant to save what was really Faure’s invention. The defendants, in opposition to this view, rely upon Hailes v. Stove Co., 16 Fed Rep. 242, affirmed, 123 U. S. 582, 8 Sup. Ct. Rep. 262. There seems to be a clear distinction between that case and the one at bar. In that case there was nothing in the specification to indicate to the public that the invention of the patentee was what he sought to make it by the disclaimer. Pie claimed “a perforated fire-pot,” etc., and when he found that this was old he sought by disclaimer to limit his invention to a particular kind of firepot, described for the first time in the disclaimer. At page 587, 123 U. S., and 8 Sup. Ct. Rep. 265, the supreme court say:
“A disclaimer is usually and properly employed for the surrender of a separate claim in a patent, or some other distinct and separable matter, which can be exscinded without mutilating or changing what is left standing. Perhaps it may be used to limit a claim to a particular class of objects, or even to change the form of a claim which is too broad in its terms; but certainly it cannot be used to change the character of the invention. And if it requires an amended specification or suplemental description to make an altered claim intelligible orrelevant, while it may possibly present a case for a surrender and reissue, it is clearly not adapted to a disclaimer. A man cannot, by merely filing a paper drawn up by his solicitor, make to himself a new patent, or*137 one for a different invention from that which he has described in his specification. That is what has been attempted in this case. There is no word or hint in the patent that the invention claimed was a fire-pot with sides grated only half-way, or part of the way, from the bottom towards the top, or that such partially grated sides have any advantage over those grated all the way to the top. The first claim, as modified by the disclaimer, has nothing in the specification to stand upon; nothing to explain it, nothing to furnish a reason for it. ”
The decision states no new law. It is entirely in line with the other authorities cited. Instead .of forbidding, it would seem to sanction, a disclaimer in the case at bar. The facts here and in the Hailes Case are wholly different. Hardly one of the criticisms upon that disclaimer would apply to a properly drawn disclaimer here.
The part of the invention which bona fide belongs to Faure is an electrode in a secondary battery consisting of a support coated with an insoluble layer of active material in the form of a paint, paste, or cement, so as to be or instantly become spongy, etc. It was this that the scientific world recognized as a discovery of great merit and importance. It was this that the distinguished Scotch electrician regarded as “marvelous.” And this was the result of Faure’s genius. No one anticipated him. It is honestly his. What he did not invent was an electrode, in a secondary battery, coated with a soluble layer of active material. Neither did he invent an electrode on which the active material is applied by “galvanic action, or chemical precipitation, or otherwise.” The claim is broad enough to cover all these forms probably, and some of them certainly. What he is not fairly entitled to he wishes to give up, and keep what is certainly his own. He does not seek to broaden his patent, but greatly to restrict it. No one will infringe unless he constructs his battery in the one way to which the patent will be confined. This is the patentee’s way, and it has many distinguishing characteristics which differentiate it from the ways pointed out by others. The matter to be relinquished is distinct and separate, and can be exscinded without mutilating what is left. No amendment is necessary. The claim, read in the light of the description, is too broad. It is sought to limit it. The disclaimer suggested will not make a new patent, or a different invention. The invention is fully described in the specification, and the limited claim will stand on that description. After giving the subject the most careful consideration it is thought that Faure was the originator of the invention just described, and that it would be unjust to him to declare the patent wholly void, if he is willing to restrict it to what is lawfully his own.
The fourth claim, if construed to cover the defendants’ structure, is void for want of novelty. It is for a combination containing the following elements: First, a secondary battery; second', a series of cells; third, in each cell a pair of electrodes, with an active spongy layer thereon; fourth, non-porous partitions between adjacent cells. The specification declares that—
“Secondary batteries, like ordinary galvanic batteries, can be made witli a series of cells side by side, or one above the other, with the intermediate walls*138 common to the two adjacent cells. In making such batteries it is advantageous, and in some cases essential, to apply a non-porous partition of rubber or other suitable substance to the plates, so as to cut off all communication between the cells. This combination of non-porous diaphragms with the electrodes in such secondary batteries constitutes a portion of the invention. ”
In other words, the claim, if not limited to the peculiar construction shown in the specification and drawings, is for placing the electrodes of a secondary battery in an old form of cells. One of the expert witnesses for the complainant says: “I understand that the series of cells described in the fourth claim of this patent is simply the series of cells of the Cruikshank trough battery transferred to or used in a secondary battery.” Another of the complainant’s experts testifies that, in his opinion, “the claim covers substantially the use, in a secondary battery, of the well-known trough divided into cells by non-porous partition’s long used in primary batteries, and in which Faure has replaced the primary battery electrodes by the secondary battery electrodes of his own construction.” And, again, jhe says: “The specification describes one way in which the elements of the combination may be constructed, and .the language of the fourth claim is broad enough to cover, not only that specific construction, but any other construction substantially the same, by Avhich substantially the same result is obtained.” Upon the statements of the patent itself without having recourse to the many structures, which the record discloses, containing a series of cells, no novelty can be maintained. It is to be observed that the claim is not necessarily confined to the Faure electrodes. After reading the specification, it may with plausibility be maintained that the patentee was of the opinion that invention was involved in doing in a secondary battery what had previously been doné in a primary battery. He wished to claim a series of well-known cells when applied to a secondary battery. The claim covers, in a secondary battery, a series of cells, comprising each a pair of electrodes, with an active, spongy layer thereon. It is broad enough, therefore, to include the electrodes of Planté, and of others, as well as of Faure. An electrician who should place a series of Planté’s couples into a trough, like Wallaston’s for instance, divided into cells by diaphragms, would infringe. But there is obviously no patentable novelty in such an arrangement, especially in view of the fact that Planté had employed almost the identical combination. In the descriptive memorandum of his patent (No. 78,897) Planté says:
“If it is desired to connect several elements in series, the plates them-selyes can serve as the walls of the contiguous troughs, just as in the Cruikshank voltaic battery. ”
' With the information derived-from the prior art before him, the arrangement of the claim would have been obvious to a neophyte in electricity. It is not often that a single-cell battery is utilized in the arts. When a battery of more power is needed, the convenient but obvious arrangement of the fourth claim would suggest itsélf to any one who has sense enough to economize time, space and money. Even if the claim could be limited to Faure’s electrodes, there would still be "nothing of which to predicate patentability. A mere-aggregation of cells, with no
A limited construction can, however, be given the claim, which will render it valid. The defendants’ expert insists that the claim must be confined to a combination in which the electrodes are combined with non-porous partitions between adjacent cells by being applied thereto. The manner in which this is done is described in the specification. It says:
“Fig. 6 is a cross-section of an electrode with non-porous partition, having the prepared plates secured on both sides, and adapted for use in a battery with series of adjacent cells. * *.* It shows the arrangement of parallel plates formed with an interposed wooden board, x. This arrangement permits of employing thin sheets of lead, while securing at the same time sufficient stiffness, and affording means of (irmly securing the parts, x, without any leakage between the adjacent cells, formed on each side of the leaden plate, a."
The specification further states that when the supporting plates are to be placed either parallel or in any other position permitting of their being distorted by mechanical strain, stiffness may be imparted by applying them on wood or hard rubber non-porous boards, so as to prevent any liquid passing from one cell to another. The boards of these compound supports have edges fitted with india-rubber, in order to render the cells perfectly liquid tight. It is argued with force and plausibility that it ivas the intention of tbe patentee, as shown by these extracts from the specification, to cover only his special construction, the novel feature of which is the non-porous partition with which the electrodes are combined, and to which they are applied. It is asserted that this intention is rendered more certain by an examination of the file-wrapper, where it is still more clearly disclosed; and that nowhere in the specification is there a description of the apparatus as constructed by the defendants. In view of
The patent granted to Joseph Wilson Swan, February 17,1885, (No. 312,599,) is for an improvement in secondary batteries. The application rvas filed January 18, 1882. The object and aim of the patentee was the production of plates having surfaces more suitable for holding the active material.' In carrying out this idea he prepares plates with perforations, cells or holes extending through the plates, in which the active material is packed. He says:
“It should be understood that the form of the cells may be greatly varied without departing from the principle of my said invention, the object being to obtain an interstitial construction of plate capable of affording a very large amount of acting surface in a small compass, and to prevent the coating of oxide or spongy lead from falling away from the plate, as it would from a plain vertical surface, unless held in position by some material external to the said coating.”
The claim is:
“A perforated or cellular plate for secondary batteries, having the perforations or cells extending through the plate, and the active material, or material to become active, packed in the said perforations or cells, substantially as described. ”
The specification states that the patentee has obtained a patent in Great Britain for the same invention, dated May 24,1881. It is argued that this allegation carried the invention back to the date of that patent, although the patent itself has not been introduced in evidence. No authority is produced to sustain this contention. Being a mere declaration, unsupported by proof, it is thought that it cannot be accepted as the date of the invention, which, in the absence of other proof, must be taken as of the date of the application, January 18,1882. The advantages of a plate constructed in the manner described are well summarized by Sir William Thompson. He says:
“The making of the support-plates perforated to receive the active oxide has great advantage over making them with mere grooves or roughenings, because it supersedes the necessity for felt or cloth to prevent the active material from falling off. * * * I have found the oxide very liable to crack away and fall off when merely placed in grooves or pressed into hollows of a roughened plate. When pressed into perforations they remain very securely attached, forming, as it were, ‘ rivets.’ * * * Even with bad usage it is a rare accident that one of the oxide ‘ rivets ’ breaks and falls out. The perforated plates have also the great advantage of extending the area of electric communication between the contiuous metallic conductor and-the spongy or porous material, and so minimizing the electric resistance. The application of the oxide in the form of numerous mutually detached parts separately held by the perforations had also a great advantage in almost annulling the warping or fracturing éffects of the expansion and contraction produced by the changes of oxidation to which the active material.is exposed in the charging and discharging of the battery. ” -
It is insisted that the patent, as issued, is an unlawful expansion of the original application, and therefore within the rule of Railway v. Sayles, 97 U. S. 563. The argument is based upon the assumption that in the original specification the patentee nowhere describes electrodes with perforations extending through the plates, and that it was not until March 24, 1882, that he mentioned a perforated plate. The complainant denies this, and asserts that Figs. 1 and 2 in the patent, as issued, are identical with these figures in the original drawings. Positive proof of this statement has not been found, but the presumption that it correctly states the fact is very strong. The original specification states that—
“ The plate shown in Figs. 1 and 2 is constructed with cells or cavities, a, for the reception and retention of spongy lead. * * * The cells maybe closed on one side, as shown at o, in Fig. 2. ”
The only rational construction would seem to be that, as the last figure showed the cells closed on one side, the two others showed them not closed but open through the plate. It must also be assumed that the officials of the patent-office performed their duty, and did not permit a fraud to be perpetrated by the alteration of the drawings. There is absolutely no proof that such alterations were made, and, if the mem-oranda of the file-wrapper can be relied upon for any purpose, they show that the original drawings were in the office at the time the claim for a perforated plate ivas presented, and long afterwards.
The question, therefore, is whether there is anything in the art prior to January 18, 1882, which anticipates the claim, or renders it invalid. The English patent granted to John S. Sellon does not anticipate, for the reason that, though dated September 10, 1881, it was not sealed until March 10, 1882, after the filing of Swan’s application. It was not made patent to the public, therefore, until March 10, 1882. Smith v. Goodyear, 93 U. S. 486, 498; Bliss v. Merrill, 33 Fed. Rep. 39, 40; Siemens v. Sellers, 123 U. S. 276, 283, 8 Sup. Ct. Rep. 117. But the evidence of Prof. Asahel K. Eaton, if it does not amount to a complete anticipation, so narrows the field of invention that nothing remains of which to predicate patentable novelty. It is thought, however, that as to some of the electrodes made by him there can be no doubt that they fully anticipate Swan’s claim. If made now for the first time they would infringe; being made before the application, they anticipate. Cook v. Tool Co,, 4 Sup. Ct. Rep. 4; Peters v. Manufacturing Co., 21 Fed. Rep. 319; affirmed, 9 Sup. Ct. Rep. 389, (March 5, 1889.) Prof. Eaton testifies that in 1881, and certainly prior to August, 1881, he made experiments in secondary batteries, using perforated lead plates for the electrodes. He finally adopted them, considering them preferable to others tried by him. These plates wore perforated by means of a belt punch, which cut out small discs varying from a quarter to five-eighths
“I afterwards adopted pne of the methods which I had tried, where I used two perforated plates with the sponge deposited upon one or both of them, and the two plates put together, so as to retain the sponge between them, the sponge filling the perforations. This made one electrode. The other electrode was made with two similar perforated plates, the peroxide being made into a paste with sulphuric acid and water, and pasted upon each side of a piece of asbestos. This was put between the two perforated plates, and pressed down, so that the paste covered the whole surface'of each half plate, and filled the perforations. Some of these plates were perforated, so as to leave a burr projecting in one direction, which aided in the retention of the pasté; the two burred surfaces being outside. This provided an enlarged cellular cavity. ”
In July, 1881, be made another battery, Avith the assistance of one George Farrington, who corroborates him in part as to its construction. This battery was made by spreading the described paste upon either cloth or asbestos, and inclosing it between two perforated plates of lead. The perforations, in the absence of a proper tool, Avere made with a knife. This formed one element. The other element was made by precipitating lead sponge upon one surface of a, similarly prepared plate, and coa^-ering it with another plate, so as to make one, folded together at the edge. The- paste was minium, mixed with sulphuric acid and Avater. This paste filled the perforations in the plates. Prof. Eaton also made electrodes by coating Avith a similar paste a frame-work of Avoven lead wire. The batteries thus constructed by him were charged,'and Avorked successfully. Besides Farrington, he is corroborated by Mr. Sleeper, who assisted in the construction of the batteries of August, 1881, by punching holes in regular order in the leaden plates. And Sleeper is, in turn, corroborated by entries made at the time in his diary, which also contains rough drawings of the perforated leaden plates. ° No evidence is offered by the complainant which at all conflicts with the verity of these statements. As before observed, the court is not permitted to reject the eAÚdence of uni'mpeached and respectable Avitnesses, when they are corroborated, and there is nothing to cast a doubt upon the truth of their statements. Upon this evidence, therefore, the first Swan patent inust' be declared invalid.
j The second patent granted to Joseph Wilson Swan is dated May 26, -'1885,'(No. 318,828.) The application was filed May 3, 1883. The claim is as folio avs:
“In a battery plate or electrode composed of a conducting support, combined with active material, the support in the form of a plate with angular or equivalent holes,, cells, or perforations extending through the same, and separated from, one another by webs, walls, or partitions of uniform cross-section, the active material being' placed in said holes, cells, or perforations, substantially as set forth.”
This, would seem to be for the same subject-matter 'covered by the first patent to Swan. It is. conceded that the alleged invention is de
“It should be observed that I do not claim herein broadly the use of plates provided with holes or perforations extending through the same, and having the active material, or material to become active, held in such holes or perforations, as this forms the subject-matter of patent granted to me on the 17th day of February, 1885, numbered 312,599.”
One of the complainant’s experts, after stating his understanding of the first patent, says of the patent in hand: “It has a specific claim, —a claim rendered specific by its limitation to uniform webs, walls, or partitions separating the perforations from each other. ” Another of the complainant’s experts says that his understanding is that the second patent covers plates or electrodes such as are described in the first patent, “with the additional limitation that the webs, walls, or partitions between the cells shall be of substantially uniform cross-section.” It will be observed that the drawing of the first patent shows a plate made in exact accordance with this limitation, and the specification states that the form of the cells may be greatly varied without departing from the principle of the invention. Even if the second patent can be distinguished from the first in the particular stated by the experts-, it is entirely clear that the difference pointed out is wholly insufficient to sustain an invention. After the first patent there was absolutely no room for the second patent; which, upon the most favorable construction for the complainant, simply claims an arrangement which any one who had sense enough to make the perforations at all would most certainly adopt. When a patent has been granted for a plate containing rows of holes, another patent cannot be granted for the same plate containing uniform rows of holes. Neither can there be anything patentable in the mere shape of the holes. A patent for a device containing round holes will preclude a subsequent patent for the same device with square or triangular holes. Manufacturing Co. v. Bushing Co., 31 Fed. Rep. 76, 79. Especially is this so when the applicant is confronted with his own express declarations that the shape is wholly immaterial. It is not necessary to consider whether a valid patent can be obtained for an invention described, but not claimed, by the applicant, in a prior patent issued to him; the application for the second patent being filed before the first patent issues. That is not this case. Swan describes no invention in the first patent which is not covered by the claim of that patent. ' What is not claimed is not patentable.
It follows, therefore, that the complainant, upon filing a disclainfér limiting the first claim of the Faure patent to an electrode of a secondary battery to which the active layer is applied in the'form of a paint,: paste, or cement, insoluble in the electrolytic liquid, is entitled to a decree for an injunction and an accounting upon the claim as thus limited, but without costs.