91 F. 665 | 3rd Cir. | 1898
Lead Opinion
This is an appeal from an interlocutory order of the circuit court for the Eastern district of Pennsylvania granting a preliminary injunction against the defendant below (the appellant here) in a suit in equity brought by William Pelzer against the Horn & Brannen Manufacturing Company to restrain alleged infringement of reissued letters patent to Luther Stieringer, No. 11,478, dated March 12,1895, and granted upon an application filed December 21, 1894. The injunction was on the first claim only of the reissued patent. The original patent to Luther Stieringer was numbered 259,-235, and was issued on June 6, 1882. The patent was for an improvement in electrical fixtures. One of the therein stated objects of the invention' is “to utilize the convenient and efficient support afforded by the gas pipe of a house for sustaining fixtures for electric lights, and to provide means for preventing the formation of a ground connection when one conductor accidentally becomes electrically connected with some metallic part of the fixture.” For the accomplishment of this object, the specification and drawings of the patent describe and show an open joint connecting the gas pipe projecting from, the ceiling with the stem of a chandelier carrying electric lights. This joint is composed of an upper ring and a lower ring, some distance apart, connected by opposite arms or links, all cast in one piece. The upper ring is centrally screw-threaded and engages the end of the gas pipe. A block of insulating material rests upon the -lower ring, and has a circular flange projecting down into the opening through this ring. On the upper side of the insulating block there is a depression in which rests a nut which engages the upper end of the chandelier stem, and thereby the stem is suspended; contact between the stem and the lower ring being prevented by the downwardly projecting circular flange of the insulating block. A washer of insulating material is put upon the chandelier stem, between the lower ring of the open joint and the ornamental covering which surrounds the stem, to complete the insulation of the chandelier from the gas pipe. No other device is described or shown for supporting from the house piping a fixture for electric lights suspended from the piping and elecr trically insulated therefrom. Fig. 6 of the drawings, indeed, shows an additional insulating block on one side of the arms or links of the open
The original patent has 11 claims, but the first claim only need be quoted. It reads thus: “(1) A fixture for electric lights, supported from the piping of a house and electrically insulated therefrom, substantially as set forth.”
In the year 1891 a suit in equity upon the original patent was brought in the circuit court of the United States for the Eastern district of Pennsylvania. That suit involved the first claim. The case was heard on the merits, upon full proofs, and the bill was dismissed. Maitland v. Gibson, 63 Fed. 126. In delivering the opinion of the circuit court, Judge Dallas said:
“The first of these claims, as expressed, comprises these three elements: A fixture for electric lights; the piping of a house; and means for electrically insulating the fixture from the piping. The language used in designating the last of these elements is, if literally accepted, inclusive of every kind of insulating device, but it is impossible to accord to the claim any such unlimited scope. The patentee, in Ms specification, fully and particularly described a particular insulating joint, and to it, I think, he must be restricted. lie, of course, could not have intended to broadly assert that he was the first to discover or contrive that two conductive bodies might be mechanically united, and yet be electrically separated, nor Is anything so preposterous now contended on his behalf. The position relied upon is that, regardless of lack of novelty of its elements, separately considered, this claim should be construed and supported as for a new combination, viz. of the fixture, of the pipe, and of any joint insulating the former from the latter. But this position is untenable, In view of the prior state of the art, and of the common knowledge of those who were conversant with it before this patent was applied for. The utmost which it can plausibly be contended that Stieringer did, which had not been precisely done before,—and the assumption of this, except for the argument’s sake, the ‘Ferryboat Exhibit’ repels,—was to insert an insulating joint between the piping of a house and a fixture for electric lights. This is the essence of his asserted combination. But similar insulation in analogous situations had been extensively practiced before; and apart from his peculiar joint, which it may be conceded was new, I am unable to perceive that his alleged invention amounts to anything more than electrically parting, while physically connecting, two pieces of metal, by a use of the familiar expedient of insulation, which might well be termed a double one but for the fact that the word ‘double’ would not indicate the frequency of its previous employment.”
Elsewhere in his opinion the judge said: “But the defendant does not use the plaintiff’s joint.” The joints which the defendant in Maitland v. Gibson used had two screw-threaded metal coupling portions, electrically separated from each other by interposed insulating material. An appeal having been taken to this court from the decree of the circuit court in Maitland v. Gibson, dismissing the bill, we affirmed that decree upon the opinion of Judge Dallas, which'we adopted as expressing our own views and conclusions. Maitland v. Gibson, 28 U. S. App. 53, 11 C. C. A. 446, and 63 Fed. 840. Our decision Was announced on October 22, 1894. Shortly thereafter, namely, on
In lieu of the first claim of the original patent, the following claim was substituted and flowed as the first claim of the reissued patent:
“(1) A fixture for electric lights constructed wholly or largely of metal, and provided with insulated conducting wires for conveying current to and from the lamps carried thereby, in combination with a joint or section having metallic coupling portions and an intermediate section of insulating material, electrically insulating the metallic coupling portions from each other, such joint being located at the upper or inner end of the fixture, and serving to electrically insulate the fixture from the grounded piping of a house by which it is supported, substantially as set forth.”
The reissued patent was before the United States circuit court of appeals for the Second circuit in the case of Maitland v. Manufacturing Co., 29 C. C. A. 607, 86 Fed. 124; and that court sustained the first claim of the reissue, giving it a construction commensurate with its terms. That decision the court below thought it ought to regard as .conclusive upon a motion for a preliminary injunction, in accordance with the established practice at circuit.
Now, we appreciate the great importance in patent litigation of uniformity of rulings by courts of concurrent jurisdiction, and, ordinarily, it is a commendable practice, upon a question of the allowance of a preliminary injunction, to accept and follow the decision of a circuit court of appeals of another circuit sustaining and construing a patent. Such practice has always prevailed in this circuit. American Bell Tel. Co. v. McKeesport Tel. Co., 57 Fed. 661; Edison Electric Light Co. v. Philadelphia Trust, Safe-Deposit & Ins. Co., 60 Fed. 397; Crump v. Light Co., 28 U. S. App. 325, 13 C. C. A. 40, and 65 Fed. 551. In the present case, however, the circumstances are so unusual that we are constrained to make an independent investigation as to the validity and scope of the first claim of this reissue, and to determine for ourselves whether the appellant, in the conduct of its business, has violated any of the lawful rights of the appellee.
It must be conceded that the first claim of the reissued patent, as compared with the terms of the original claim, seems to be narrowed, but this is in appearance merely. New limitations have been introduced, but most of them are immaterial. Thus, the calls for fixtures “constructed wholly or largely of metal,” “insulated conducting wires,” and a location of the joint “at the upper or inner end of the fixture,” are unimportant additions. For all practical purposes, the claim is not narrowed at all. The joint of the combination of the first claim of the reissue is “a'joint or section having metallic coupling portions and an intermediate section of insulating material, electrically insulating the metallic coupling portions from each other.” This is sweeping language and far-reaching. Undoubtedly, the reissued first claim covers the joints which the defendant in Maitland v. Gibson, supra, used, and which were adjudged to be different from Stieringer’s described joint and not to infringe the original patent. Again, this record contains
Upon the facts,disclosed by this record, it seems to v. that, even if the first claim of the reissue were otherwise sustainable;, yet it must be held to be invalid, in view of the intervening private and public rights which have sprung up, and the unreasonable delay in the application for the reissue. Miller v. Brass Co., 104 U. S. 350; Ives v. Sargent, 119 U. S. 652, 7 Sup. Ct. 436; Eby v. King, 158 U. S. 366, 374, 15 Sup. Ct. 972; Hubel v. Dick, 28 Fed. 132, 137; Peoria Target Co. v. Cleveland Target Co., 7 C. C. A. 197, 58 Fed. 227; Machine Co. v. Searle, 8 C. C. A. 476, 60 Fed. 82.
Speaking upon the subject of the delayed Stieringer reissue application, the court in Maitland v. Manufacturing Co., supra, said:
“Delay in this regard is obnoxious, because, as a rule, individuals and the public have acquired, during such delay, ‘adverse equities which would be destroyed by a reconstruction of a void claim.’ In this case, the adverse interests, whatever they are, arose after the termination of the Gibson litigation, and as soon as they came into being they were warned hy the reissue of the existence of a patent which covered the attempted infringements.”
Now, whatever may have been the proofs before the circuit court of appeals for the Second circuit in that case, it is clearly established by the record here that valuable adverse interests, including the interest of this appellant in the Pierce patent, arose long before the termination of the Gibson litigation. Thus, it appears that these two cases are distinguishable in a most important particular.
But there is another objection to the first claim of the Stieringer reissued patent which, we think, is equally fatal. The language imported into the reconstructed claim—"a joint or section having metallic coupling portions and an intermediate section of insulating material, electrically insulating the metallic coupling portions from each other’’ —is not to he found in the specification or claims of the original patent, and, indeed, does not appear in the reissued patent except in the first claim. How very wide the scope of this language is we have already seen. Now, the original patent neither describes nor ex-
The order of the circuit court granting a preliminary injunction is reversed, and the cause is remanded for further proceedings.
Dissenting Opinion
I dissent on the ground that the decision in Maitland v. Manufacturing Co. [29 C. C. A. 607], 86 Fed. 124, by the circuit court of appeals for the Second circuit, should control our decree. The issue and proofs were substantially the same there as they are here, and the defendant here was associated in the defense there. I cannot regard the effort made in the foregoing opinion-to distinguish the cases as successful. The conclusion to reverse rests mainly on a contention that the decision in Maitland v. Manufacturing Co; is erroneous; and it was upon this contention that the appellant rested his case.