| U.S. Circuit Court for the District of Southern New York | May 9, 1910
The bill charges the joint infringement by the defendants of patent No. 490,034 of January 17, 1893, issued to Thomas E. Morford and the Enamel Insulator Company for electric heater or improvement in electric insulators. The specification states:
“The invention, stated generally, consists in embedding electric conductors in an enamel of insulating material that is made to adhere to the device that is to be heated by or otherwise used in connection with an electric current and which serves to insulate the conductors while connecting them to the devica”
To establish the validity of the said patent and its infringement by the defendants and as an absolute bar to the main defenses interposed herein, the complainant chiefly relies upon a prior litigation between the former owners of the Morford patent and the Carpenter Enamel Rheostat Company brought for the infringement of the Morford patent. The complainant claims that the defendant H. Ward Leonard practically owns and controls the Carpenter Enamel Rheostat Company and the Ward Leonard Electric Company, and that he personally instigated the infringements of the patent in suit by which he and his codefendants profited. There is evidence tending to show that on Jan
In the suit pending in the United States Circuit Court for the district of Connecticut, involving the Carpenter patent and to which the defendant H. Ward Leonard was in privity, it was adjudicated that the claims of the Morford patent were valid and infringed. The court did'not .hold that the Carpenter patent was invalid, or that it was for the identical invention described in the Morford specification and claims. This was practically decided by Judge Wallace in Leonard v. Simplex Electric Heating Co. (C. C.) 145 F. 946" court="None" date_filed="1905-12-01" href="https://app.midpage.ai/document/leonard-v-simplex-electric-heating-co-8760874?utm_source=webapp" opinion_id="8760874">145 Fed. 946, who had before him. a plea interposed by the defendants to the bill which averred infringement of the Carpenter patent by the complainant in this action. Such being the situation, the scope of the claims in controversy may properly be ascertained for the purpose of determining whether the resistance units and rheostats manufactured by the defendants are an infringement thereof. Said claims read as follows.
“1. In an electro-heating apparatus, the combination, with the heated-surface plate and the resistance, of a coating of enamel or its equivalent securing the resistance to, but insulating it from said plate, substantially as set forth.
“2. In an electro-heating apparatus, the combination, with the plate to be heated and the resistance, of a coating of adhesive enamel or its equivalent for securing the resistance to, but insulating it from said plate, substantially as set forth.
“3. In an electrical apparatus, the combination with a supporting body and an electric conductor, of a coating of enamel or its equivalent securing the conductor to while insulating it from the body, substantially as set forth.”
Claims 1 and 2 in terms are limited to an electric heating apparatus of metal or other material, while claim 3 is without any limitation, and broadly includes the combination of elements in an electric apparatus. The Patent Office at first rejected claim '3 on the ground that the antecedent art disclosed the invention, but on appeal the. board of examin
“In using tlie term ‘enamel’ I refer to any of the adhesive substances commonly employed to produce on the surface of metallic and other objects an adherent coating or film usually called an enamel, and which is made permanent by heating it after its application; hut I prefer to use such substances as are commonly applied to iron-ware in the manufacture of cooking utensils, generally known as granite-ware. However, I do not regard as equivalents glass or such other vitreous substances as have not the capability of requisite adhesion to the body they coat, and the property of expanding and contracting with it sufficiently to avoid breaking of the insulation.”
Such disclaimer must be taken as a substantial admission that the use of enamel as a coating on an apparatus for embedding layers or strands of wire in which glass or its equivalents are used to form the inclosing material was old at the date of the invention in suit. The action of the Patent Office was principally based upon the English patent No. 85 of 1882, which specifies glass and shows how it may be treated as the equivalent of enamel. In such patent the wires are coated with vitreous material to insulate one from the other, but the examiner held that it does not secure the conductor to the conducting bodiy. The disclaimer in suit makes clear i think lit at what the pat-entee intended was to include enamel which contains no glass or glass ingredients, and to thereby differentiate his invention from that of the prior art. The legal effect of the disclaimer was to narrow claim 3 to the precise method of manufacture and to enamel having the restricted meaning given it in the spodiicatioti.
There were other patents of the prior art such as the patent to Newton, No. 119,093, not cited by the examiner, which shows that it was not new to cover a conductor in an electrical apparatus with an insulating material of glass or of a material in which glass was an ingredient. The defendants also cite the patents to Paige, No. 394,207, to Alberger, Nos. 201,477 and 211,G8J, and to Arbogast, No. 220,907, from which it appears that the combination of the claims as literally expressed was old. Giving due consideration to the proceedings in the Patent Office, the object of the patentee as stated in his specification, and the evidence, I conclude that the patent was not a primary one, and the claims,'must be limited to an “enamel” which excludes glass in any form apd which in its use acts as an insulator for the conducting wires from1 the plate or support and also to imbed such wires in such way as to secure them thereto.
The resistance tubes manufactured by the Ward Leonard Electric Company are of porcelain. The wire is wound around them, and, to prevent its deterioration, they are covered by a coating of glass. The resistance tubes are in no sense heating apparatuses, nor have they heated surface plates within the meaning of claims 1 and 2. The tube is not a conduct hr and the coating placed thereon does not perform the office of securing the conductor thereto while at the same time operating as an Insulator as in complainant’s device, nor are the rheostats of the demjnciant’s manufacture an infringement of the Morford
■ As the essential elements of the claims in suit as they are herein construed are not found in the defendant’s articles of manufacture, it follows that a decree may be entered dismissing the bill, with costs.