Plаintiff charges defendant with infringement of its patent, to Anthony, 2,198,423, for a leak proof dry cell flashlight battery. Defendant asserts invalidity and noninfringement and in a counterclaim prays judgment accordingly. The allegedly infringing cell was manufactured by General Dry Batteries, Inc., who defends the suit.
Dry cells are not of recent origin; indeed, the basic elements involved in their proper construction have been well known for many years. In keeping with the development of ' electrical devices generally, the flashlight battery industry has grown to the extent that some 300,000,000 batteries were sold in the United States in 1941. Despite this development and the efforts of competing companies to perfect their products, two problems have persistently troubled the trade and the user, viz., leakage of electrolyte from deteriorated cells and swelling of exhausted cells to the point of destroying the casings in which they are enclosed.
The conventiоnal dry cell employs a cylindrical cup like zinc electrode serving as a container for a central carbon electrode, electrolyte and depolarizing mix. A closure at the bottom provides the terminal for one electrode and one at the top that for the other. The term dry cell is misleading, for the electrolyte has the consistency of cream, consisting of a mixture of ammonium chloride, zinc chloride, water and starch. Aftеr the mixture has been placed in the zinc cup, it is sometimes heated and the starch thereby “gelantinized” into a paste. In use the electrolyte gradually corrodes the zinc until eventually the mixture leaks through the container. Further, if the cell has been short circuited or placed under load for an extended period, certain solids form within as the zinc is eaten away, with resulting expansion of the contents of the cell, and, as a result, the walls of the cell bulge and break and the liquids inside leak out. These liquids usually include zinc chloride and ammonium chloride and, in a short time, injure the metal walls of the flashlight casing. If the leakage is discovered promptly, damage may be minimized by extracting the leaky cell and cleaning the casing. If leaking cells are permitted to remain in the casing for any extended period of time, however, the metal of the case will be corroded and the cells continue to swell and “freeze” to the casing so as to prevent removal and deform and render useless the case. Because of the danger of damage from leaking cells, companies producing and selling batteries and flashlights have usually warned purchasers to remove batteries from flashlights after they have become dead, show signs of oozing, or the flashlight is to be stored for a period of time.
It was with the idea of remedying these defects and eradicating the trouble that Anthony pаtented his leak proof battery. Claims 1, 2 and 3 in issue read thus:
“1. A leak immunized flashlight dry cell provided with circuit terminals at opposite ends, comprizing: a hollow cylindrical zinc metal electrode containing electrolyte; a centrally disposed carbon electrode and depolarizing-mix in said electrolyte; a bottom- closure for the cell affording a terminal for one of the electrodes; a top closure for the cell provided with a terminal for the other electrode electrically insulated from the first mentioned terminal; and a protecting sheet metal sheath insulated from both of said electrodes and enclosing the side walls of said metal electrode and tightly embracing said closures so as to prevent leakage of the electrolyte from the unit.
'“2. A device as specified in Claim 1, in which the sheet metal sheath is insulated from both of the electrodes by an interposed sleeve оf paper which has been treated to render it moisture resistant and electrically nonconductive.
“3. A device as specified in claim 1, in which the marginal end portions of the metal sheath are turned inwardly to form flanges which overlap the end closures.”
Plaintiff admits that all elements included in these claims are old except the last and that the scope of the claimed invention is limited to providing and applying a steel jacket to the convеntional cell to make it,
The alleged infringing battery is substantially identical with plaintiff’s commercial battery, except that the bottom closure of the accused battery is the bottom of the zinc cup, being madе noticeably thicker than the zinc side walls to prevent it from corroding and leaking. Plaintiff’s commercial device, in addition to the bottom of the zinc cup, which, is the same thickness as the side walls, utilizes a steel disc which is held tightly in place by crimping the side walls over it.
Every element in Anthony’s combination was shown in one or more prior combinations except that claimed by him in these words: “a protecting sheet metal sheath insulated from both of said electrodes and enclosing the side walls of said metal electrode and tightly embracing said closures so as to prevent leakage of the electrolyte from the unit.” This he added to the conventional flashlight battery for the purpose of doing away with the bete noir of battery manufacturers and the bane of consumers —leakage resulting from corrosion and swelling of the cell destroying the flashlight casing or preventing removal of the cell from the container. Plaintiff cоntends that Anthony was the first to solve these two persistent fundamental .problems and frankly admits that his invention lay in providing the insulated steel jacket with firmly gripped end closures for common dry cells so as to withstand gas pressure and mechanical pressure and make the cell practically leak proof.
There is no question under the evidence that the additional element overcame these two trouble makers or that Anthony by his combination solved the prоblem, not by preventing leakage absolutely hut by reducing it to such a minimum as¡ to remove almost entirely the prevalent troubles. His device met with immediate remarkable success. Not only did the sales of plaintiff increase rapidly but they grew in greater proportions than those of other manufacturers in a highly competitive field. It is established, almost as an undisputed fact, that Anthony contributed great utility to the construction of efficient dry batteries for all practicаl purposes free of leakage and swelling. To this accomplished utility we must give due weight in determination of whether he achieved invention, for, as the Supreme Court has said, it is entirely proper that evidence of great utility of method or device, in some circumstances, be accepted as evidence of invention. Where the new device satisfies an old and recognized want, invention ordinarily should be inferred, rather than the exercise of mechanical skill, for mere skill of the art would normally have been called into action by the generally known want. Paramount Publix Corp. v. American Tri-Ergon Corp.,
The question of ultimate importance, therefore, is whether what Anthony accomplished was invention; whether, in addition to utility and novelty, what he taught the industry resulted from the exercise of inventive genius on his part or reflected merely the skill of one trained in the art in interpreting the teachings of prior patents and uses of which he had knowledge.
What did Anthony know and with what' was he charged in the way of education with respect to the desirability of the metal sheath which he added to the old combination? “The court first looks into the art, to find what the real merit of the alleged discovery or invention is, and whether it has advanced the art' substantially. If it has done so, then the court is liberal in its construction of the patent, to secure to the inventor the reward he deserves.” Eibel Process Co. v. Minnesota & Ontario Paper Co.,
O’Harra in 1882 placed a galvanic battery within an insulating container.
Kohn, as early as 1903 in patent 720,592, taught that where, in a battery, the inner container serves as the positive element, the “excitant” will soon eat through the wall and that by enclosing the zinc con
Byrne, in 1910 in patent 946,009, placed a primary battery in a metal container. He disclosed no purpose to prevent leakage from within but an intent to water proof and protect the battery from rough handling.
Burgess, in 1,188,488 in 1916, called attention to the fact that leakage оf cells occurs, leading to their early destruction, and taught that the zinc cup should be enclosed in a wrapping of insulating material. Over this insulated container he slipped a metal cap covering perhaps the upper one third of the cell. Burgess was groping with the problem; he was attempting to prevent leakage and made his prescription of a container of insulated material partially covered by ■ a cap of brass. He did not disclose a complete metal container for the cell, but he did teach use of an insulated container covered in part by another of metal.
Dunn, in the same year in 1,233,204, placed two electric batteries in tandem series in a cylindrical metal container for the purpose of water proofing the combination and making it strong enough to resist physical contact with other objects.
Olaneta, in his application of August 18, 1920, resulting in 1,623,719 issued April 5, 1927, like Burgеss, slipped his battery into a casing of “insulating material,” in the shape of a cylindrical can provided with a bottom of the same material, thus completely insulating the contained cell from any object with which it might come in contact. The cell, with its insulating cover, was then placed in an outer container in the form of a cylindrical can of any “suitable metallic material,” thus insulated from the zinc cup. He prescribed a snug fit so that the “pitch seal” would not flow between the respective containers and so that his combination prevented short circuiting and furnished protection from entrance of moisture from the exterior. He said that the outer container might be made of hard rubber but that it must be water proof. He evidently was not attempting to prevent leakage from within but seepage from without.
Miller in 1927, in 1,654,823, dealt with a combination to protect the zinc cup from corrosion and swelling. He placed within a metallic casing a container of rubber or other insulating material which in turn held the essential' elements of the cell and thén placed between the rubber and the outer metallic casing, absorbent cotton to take up any leakage through the rubber container. He wa°s struggling with Anthony’s problem and thought he had solved it by prescription of the elements mentioned. His method of solution was far afield from what Anthony did and he disclosed no conception of Anthony’s solution.
Smith, in 1930, applied for patеnt issued November 17, 1936, 2,060,832, saying that he was endeavoring to provide an improved closure or seal for dry cells avoiding various objections encountered in other types of closures. He did not solve the problem confronting Anthony or make any suggestions which could lead by logical deduction to Anthony’s conclusion. ■ •
In the English patent 438,663, wherein complete specification was accepted November 8, 1935, the patentee described a new closure which would prevent the necessity of sealing the cell with bitumen or any similar composition. The inventor placed his zinc cup within a cylindrical container which he specified should be made of straw-board, fibre or similar insulating material, providing a convenient service for attachment of labels and advertisements. He merely water-proofed the cell and made it attractive. He did not teach Anthony how to prevent leakage and swelling. His containеr would not withstand pressure.
Anthony in his earlier patent of June 11, 1932, 1,991,132, Serial 616,709, struggling with the same problem, made certain suggestions to prevent escape of electrolyte and corrosion but he did not teach what is included in the patent in suit.
Corigliano in 1932 applied for patent, 2,000,510, issued May 7, 1935. He employed the usual cell in a metal cup, in which was inserted a central electrode, and an outer container with insulation between the two latter and the inner cup. He built “а tight seal regardless of temperature conditions,” to protect the cell from seepage. He did not prevent swelling or leakage.
It is, apparent, therefore, that when Anthony conceived the idea of placing the cell within a metal container insulated from the cell for the рurpose of preventing leakage and swelling, he did something that nobody else had exactly done or taught. Nobody else had solved the problem satisfactorily or suggested the solution which he supplied.
What did Anthony do? He added to the conventional dry cell a strong outer metal container to prevent swelling and leaking, insulated it from the zinc container and sealed the end closures in such manner as to achieve practical prevention of leakage and swelling. He learned from the prior art that metal containers could be used to water proof dry cells. He learned that certain patentees had employed outer containers of insulating and water proofing character. He did not learn from any of them that, by surrounding the zinc cup with an insulated metal container with proper closures, leakage and swelling, to all appreciable extents, could be eradicated. No one of the prior patents contained any such teaching, nor did any of the prior uses offered in evidence disclose any such suggestion. This was his idea, a new and useful one satisfying a long felt want, followed by commercial success, a striking example of which is the acceptance of plaintiff’s battery in competitive bidding by the United States Signal Corps, where long life of the battery in the field is highly desirable. Was this merely perfection of workmanship or was it of thаt impalpable quality constituting invention ? While not all improvement is invention, yet every immediate step in advance which rises to the dignity of creation is entitled to protection and it may result from long careful consideration as well as from a flash of thought. Does it spring from that intuitive faculty of the mind put forth for new results, yielding what had not before existed or bringing to light what had previously lay hidden from vision? Hollister v. Benedict & B. Mfg. Co.,
As Judge Alschuler said, speaking for the United States Circuit Court of Appeals for the Seventh Circuit, Wahl Clipper Corp. v. Andis Clipper Co. in
Invention is not necessarily absent from a patent, however simple, unless what is produced is logically deducible from the prior art. Williams v. American String Wrapper Co., 7 Cir.,
There is little question as to infringement. Plaintiff’s and defendant’s batteries are almost identical. Both have the typical zinc cup, the electrolyte, depolarizing compound and the centrally disposed carbon electrode found in the conventional flash light battery. In addition, each has the leak proof; swelling resistant outer steel jacket insulated from the inner zinc cup, and each jacket grips the end closures firmly.
Defendant asserts its avoidance of infringement in that the bottom end closure of its battery is merely the zinc cup made thicker on the bottom than on the walls, while plaintiff employs an end closure consisting not only of the bottom of the zinc cup which it builds the same thickness as the walls, but also a steel disc.
An examination of the. claims in the Anthоny ' patent discloses, however, that there is no narrowed specification as to how the end closures are to be formed. The claim merely states, “ * * * a bottom closure for the cell affording a terminal for one of the electrodes; a top closure for the cell provided with a terminal for the other electrode, electrically insulated from the first mentioned terminal.” It is apparent, and plaintiff admits, that the novel element added tо the prior art by Anthony was the metal jacket, and that the other elements, including end closures, the electrolyte, zinc cup, and centrally disposed carbon electrode, were all elements utilized in prior art batteries, and included in combination with the new element. It is true that some of the drawings in the patent illustrate a steel disc used as an end closure, but others illustrate a device in which the bottom closure was integral with the walls. In making a metal containеr the choice of an' integral closure or a separate one gripped tightly by the walls was a mechanic’s choice.
Defendant can not escape infringement by copying the essential novel element of the patent, and in doing so merely exercises the mechanic’s option as to precise method of manufacture in a respect not the essential part of the invention.
Defendant asserts a defense of file wrapрer estoppel and claims that plaintiff is limited to Figure 11 of his patent, which was a drawing of a dry -cell with
Judgment will enter finding claims 1, 2 and 3 valid and infringed and dismissing defendant’s counterclaim for want of equity.
The findings and conclusions herein contained shall be included in my more formal findings and conclusions entered contemporaneously herewith.