111 F. 923 | U.S. Circuit Court for the District of New Jersey | 1901
The defendants do not dispute that there lias been an infringement, if the patent in suit is a valid one; but they deny that it is, on the ground that it has no novelty, and that the process involved in it is not patentable, and, if these be found against them, they further assert that Locke was the real inventor, and not Boch, under whom the plaintiff claims. The patent is for a high-tension porcelain electric insulator, manufactured according to a specified method, as set forth in letters patent issued to John W. Boch, March, 1898, on an application filed Octo
There is no novelty in an insulator made up of separate parts fitted into each other, whether of the same or different material. This appears in the Varley English patent (1861), the Johnson & Phillips (1878) , the Pass and Seymour Cuban insulator (1892), the Hauty (1893), the Locke (1896), and the Locke Cornell two-part insulator of February, 1897. Neither does fusing the two parts together add anything. Admittedly this is an ordinary process in pottery, which is exemplified in the N. Boch door knob (1875), the Geery mantle (1879) , and the Anderson irrigating tile (1886). In the Locke insulator of February, 1897, also the shells were to be fused into one.
But the novelty claimed for the patent in suit consists not in these things alone, but in a combination of them, with the other and further step of supplying an extra amount of liquid glaze, sufficient not only to fuse the separate parts into a single whole, but to so fuse them that all the cracks and crevices which exist or may arise in the process of firing shall be completely closed and filled. This is secured, as already said, by turning the parts with the petticoats up, and thus providing a receptacle or reservoir to hold the glazing material, and conduct it down in between the porcelain shells as they are being fired. In other words, it is not so much the fusing as the particular manner of doing so, and the results thereby obtained, that constitute the invention; and this, in my judgment, has not been anticipated by anything found in the prior state of the art. *
The Dinsmore experiment comes the nearest to doing so. About the middle of January, 1897, Locke sent to the Imperial Porcelain Works, a firm doing business at Trenton, blueprints from which to have some two-part insulators constructed. Mr. Dinsmore, one of the firm, had dies cut out according to the patterns so given him, and insulators molded from them, somewhat in the annexed form:
And, after having dried and biscuit fired them, the shells were separately dipped in glaze, and fitted into each other for the final burning. In a few instances, Mr. Diusmore, finding the inner piece too small, thought he would try whether, by putting in some extra glaze, he could not keep it central, and prevent it from tipping, but the results were not satisfactory. When the insulators wrere put into the kiln, with the petticoats up, the glaze, with its natural shrinkage, flowed down into the bottom between the two shells, leaving a considerable space unfilled between them. And in those cases where the petticoats were turned down the glaze flowed out, and left the space almost entirely empty. About 150 of these insulators were made for Docke at this time, but only a few were delivered to him, because he did not pay for them. Whether any of those delivered were of the extra glaze experimental lot does not appear. The rest were never put in use or sold, and were ultimately broken up, and consigned to the scrap heap. Docke tries to claim the benefit of this experiment, whatever it was, and asserts that it was conducted according to his instructions. But Diusmore denies that Docke had anything to do with it, and says that what he did was entirely his own idea, and in this he is confirmed by his partner, Duggan, as well as by the general circumstances. At all events, it was not followed up, and nothing came of it, and, what is still more to our purpose, it. did not produce a glaze-filled insulator such as the one in suit, nor was it calculated to do so.
This unsuccessful and abandoned experiment does not operate as an anticipation of the present patent. Deering v. Harvester Works, 155 U. S. 286, 15 Sup. Ct. 118, 39 L. Ed. 153. It involved no use or discovery of the process or product invented by Boch, however close it may have come to it. Diusmore's whole effort, as we have seen, was directed to steadying the inner shell so that it would'fuse true. He had no conception of supplying extra glaze to flow in and fill the
Equally futile is it to assert that the rejected Locke application of February 5, 1897, was a prior publication as to Boch, which disclosed to him, as well as anticipated, what he has since put in shape. This, in a way, is a new phase of the old question of priority decided adversely to Locke in the second interference proceedings, if it is not, indeed, an attempt to reopen it. Passing by that feature, however, for the moment, there is no merit in it, independently considered. While it is true that when in September, 1897, the two applications of Locke and Boch were thrown into interference, Boch had access, under the rules, to Locke’s files, yet there is nothing to show that he derived anything from this opportunity, nor, indeed, do I see how he could. To reach- that conclusion, I must hold that the Locke application virtually embodied the present invention, and that is really the argument which is made for it. The process there described, it is said, calls for fusing; and in the diagram which accompanies it, by a heavy black line between the -two parts of the insulator where the fusing is to take place, the use of extra glaze it is claimed is shown, thus anticipating Boch’s use of it, and suggesting it to him, as is proved by his application of October 23d, immediately following. To this, however, there are several things to be said. In the first place, I am far from persuaded that Locke’s application really shows extra glaze. Admittedly it says nothing about it, and Locke himself swears, in the course of the interference proceedings referred to, that he did not disclose -to his attorneys, when giving them instructions for the 1897 application, that he filled the space between the two shells with extra glaze for the purpose of fusing them together, thus showing, to say the least, that it had no great prominence in his mind. He explains the omission by saying that he did not consider the fusing with glaze patentable, but that does not do away with the effect of omitting it. And, if his first application covered the subject, why was it necessary for him to make a new and independent one, as he did in 1898, when he discovered that Boch had obtained the patent in controversy? It is contended, however, that Locke shows extra glaze, even if he says nothing about it; this being indicated, as claimed, by the heavy black line between the shells. But in the specification of his invention the black line which is now relied upon is declared to represent simply the fusing together of the two parts of •the insulator, or, to quote his own words, in describing the process of manufacture, “The two insulators are again put into the kiln and fused together, as shown by the dark line, c.” Furthermore, in
But even assuming that all this is not so, and that Locke’s application really discloses, in the way he contends, the use of extra glaze for the purpose of fusing, the whole argument that Boch got his ideas from it, and that as to him it amounts to a prior publication, is built up on the theory that the patent in suit is one for extra glaze only, or essentially. This, it must be apparent from what has already been said, falls far short of a true apprehension of it. It is not alone for that, although that is involved in it, but for the whole process by which the glaze is supplied, including the exact manner of supplying it, and this could not possibly be gleaned from anything in Locke’s application which has no suggestion of it.
But, as intimated a moment ago, the argument with regard to the Locke application is no more than a specious attempt to reopen the question of priority, which was decided adversely to Locke in the second interference proceedings. Those proceedings did not end with the decision of the commissioner of patents, but were carried to the court of appeals of the District of Columbia. Had they stopped short of this, and rested with the hearing before the commissioner, his decision of itself would have had to be accepted as controlling, in the absence of evidence carrying thorough conviction to the contrary. Morgan v. Daniels, 153 U. S. 120, 14 Sup. Ct. 772, 38 L. Ed. 657. Much more is this effect to be given to it when it has been confirmed, as it has, by the judgment of the court of appeals. Whether this made it res judicata or not I do not need to determine. It is sufficient to hold that with no new evidence adduced the question of priority in all its forms and phases is concluded between the parties, and will not be reopened.
As to the question of patentability, which is the only thing left, while Locke, or those claiming under him, may not be estopped from contesting it, yet, considering that Locke himself endeavored to obtain a patent for the same identical process, copying the Boch application verbatim, it does not come with good grace for him, or his assigns, to do so. Shuter v. Davis (C. C.) 16 Fed. 565. He also virtually affirmed to its patentability in the affidavits of Cahoon and himself, presented to the court of appeals in the first interference proceedings. But passing all this by, and laying no especial stress, as we might, on the fact that the patent office has pronounced in its favor and allowed the patent, why does it not embody a patentable process and product?- The defendants contend that the commissioner of patents and the court of appeals of the District of Columbia have both decided in the first interference proceedings that it did not. But Locke’s application was the only thing involved in those proceedings, and it was that alone that was passed upon. The fusing there spoken of, it was held, must be regarded as the ordinary .process by slip or glaze, which, being such as any potter would employ, was not patentable. In the Boch patent, however, while the fusing by glaze is made use of, it is a special, and not an ordinary, use, and there is
Let a decree be drawn affirming the validity of the patent, appointing a master, and directing an account.
The defendants thereupon applied for and obtained a reargument on the ground that the fourth claim of the patent, being for a product, was not patentable, the same being capable of being produced by other processes, and particularly could not be included in one and the same patent with claims for the process by which it was produced.
(December 26, 1901.)
I am not persuaded by the reargument that any mistake was made in sustaining the Boch patent in its entirety,—not only the process specified in the first three claims, but the product covered b,y the fourth as well. The truth is it is the product that is the important thing, rather than the process by' which it is brought about, although that devised by the inventor seems peculiarly well calculated to produce it. In considering the invention, regard must be had to the difficulties to be overcome and the purposes to be accomplished in view of the prior state of the art. As already pointed out in high tension insulators, the greatest care has. to be taken to keep the porcelain free from flaws and imperfec
Finding no error, therefore, in my former conclusions, the case will proceed to a master as heretofore ordered.
Of Middle district of Pennsylvania, specially assigned.