nDERAL REPORTER, vol.
EDISON EUOOTRIC'LIGHT Co.
UNITED STA'rES ELECTRIC LIGHTING CO.
(Circuit Court of Appeals, Second Circuit. October 4, 1892.)
PATENTS FOR INVENTIONS-INVENTION-INCANDESCENT ELECTRIC LAMPS.
The second claim of letters patent No..228,898, issued to 'l'homas A. Edison, January 27, 1880, for an incandescent electric lamp, consisting of a combination of carbon filaments with 'a receiver made entirely of glass, from which the air is ex· hausted, and conductors passing through the glass, is valid, since, in view of the ,prior state of the art, it required invention to substitute a carbon filament for the platinum wire of bis prior French patent, (No. 180,910, May 28,1879,) and so com· bine it with a vacuum vessel as to pl'event the disintegration of the carbon by "air washing.»
" The word "filament,» used as descriptive:of the size of the burner, is sufficiently ,definite, in view of illustrlltions in the specification, and it is not necesaary that its maximum and minimum dimensions should be specified, especially since defend· ant's burners indisputably lie wholly on one side of the dividing line between rods and filaments.
The fact that the pateritdid not ,detail the method always used by the patentee, '. t 01 passmg a current through the filament during the process of exhausting- the bulb, does not render the patent void for want of a sufficient description to enable a person skilled in the art to construct a Buccessfullamp; for the patent called for a nearly perfect vacuum,and. tuis process of obtaining it had been described in Edison's French platinum patent, and the necessity for it, in order to obtain a perfect vacuum, had been pointed out by Sawyer and Man, and would therefore naturaUybe resorted to by one familiar with-these publications. I. SAME-RESULTS NOT FULLY UNDERSTOOD. . . "'rhe fact that this process produces a carbonization of the filament, and is now ·used as partof the process of carbonization, whereas the patent merely directs that the filament be "properl:!," Clll1bonized, '.'does not show a suppression of a necessary ·element of the invention, or a want of sufficient description; for, it being apparent that one skilled in the art would use this method, it is immaterial that its full bene;ficial effect was not understood at the time of the application. 5. SAlIIE-LIMITA.TION BY FOREIGN l:'ATENT. A prior Canadian patent,' issued for 5 years, and extended for the further period of 10 years, should be regarded as haVing a'continuous term for tue entire period, and as not limiting the United States patent to any shorter term. Refrigerat'ing Co. v. Hammond, 9 Sup. at. Rep. 225, 129 U; S. 164, followed. 6. SAME. The Canadian patent a.ot, 'which provides that "when a foreign patent exists, the Canadian patent shall expire at the earliest date at which any foreign patent for the same invention expires, » refers only to foreign, patents which exist before the issue of the relevant patent.
7. SAME-LIMITATION ON FACE oli' PATENT.
The failure to limit the patent 'on its face to a. sborter term than 17 years, so as to expire at the aame time with the prior foreign patent baving-the .IIhortest term, does not affect its validity, RefriueraUng Co. v. Hammond, 9 Sup. Ct. Rep. 225, 129 U. S. 164, follmved. . . , .
SAME-CERTIFICATE OF CORRECTION BY COMMISSIONER.
The c.ommissioner of patents has no jurisdiction to alter a patent by a certificate of correction. Such a certificate is wholly void, and the patentee's request to have the same made cannot be considered as a surrender of the original patent. . Notwithstanding the merger of the complainant with another company into a new corporation, the law of the state of New York. providing that pending suits shall not be deemed to have been abated or discontinued by reason of any such oonsolidation, is effective to prevent such abatement in a federal court.
SAME-ABATEMENT BY DISSOLUTION OF COMPLAINANT·
Appeal from the Circuit Court of the United States for the Southerr.. District of New York. In Equity. Bill by the Edison Electric Light Company against the United States Electric Lighting Company. The suit was originally
EDISON ELECTRIC LIGB;T CO. II. UNITED STATES
brought on the three following patents: No. 223,898, issued January 27,1880; No. 227,229, issued May 4,1880; and No. 265,777, issued October 10, 1882. But by stipulation the bill was amended by withdrawing the last two patents. As to the other the circuit court found infringement of the second claim, and accordingly rendered a decree for injunction and an accounting. 47 Fed. Rep. 454. Defendant appeals. Affirmed. For opinions rendp.red in the circuit court on questions relating to the production of documents, see 44 Fed. Rep. 294 and 45 Fed. Rep. 55. Kerr & Edward Wetmore, Samuel A. Duncan, and Frederic H. Betts, for appellant. Eaton & Lewis, a.A. Seward, Grosvenor P. Lowrey, S. B. Eaton, Albert H. Walker, and Richard N. Dyer, for respondent. Before LACOMBE and SHIPMAN, Circuit Judges·
. LACOMBE, Circuit Judge. On January 27, 1880, under an applica. tion filed November 4, 1879, letters patent No. 223,898 were issued to ThomasA. Edison, and by subsequent assignments passed to the com· plainant. The four claims of the patent are as follows:
"(1) An electric' lamp for giving light by incandescence. consisting of a filament of carbon of high resistance, made as described, and secured to metallic wires, as set forth. (2)· The combination of carbon filaments with a receiver made entirely of glass. ancl conductors passing throngh the glass, and from which receiver the air is exhausted, for the purposes set forth. (3) A carbon filament or strip coiled and connected to electric conductol'S so that only a portion of the surface of such carbon conductors shall be exposed for radiating light, as set forth. (4) The method herein described of securing the platina contact wires to the carbon filament, and carbonizing of the whole in a clQsed chamber, substantially as set forth."
In the lamp made by defendant the carbon conductor is not coiled as indicated in the third claim, nor is it secured as indicated in the fourth, nor does complainant contend that either of these claims is infringed. The circuit court held that the first claim was by its phraseology limited to lamps in which (among other things) the leading-in wires are "secured to the filament according to the method of the patent, that is, by cement carbonized in situ," and that as defendant uses clamps for this purpose it does not infringe. This construction of the first claim has been acquiesced in by the complainant, which has not appealed from the decision. There remains for consideration only the second claim. The defendant's burner is of carbon, so small in cross section that, by the ordinary usage of common speech, it may be fairly called a "filament." The receiver, which contains. the burner, is made entirely of glass. The conductors, which connect, with the burner, pass through the glass, and from the receiver the air is exhausted. Defendant contends, however, that the specifications of the. patent and the priorstate Qfthe art require that this second claim be so limited in construction that defendant's apparatus will not fall within its terms, and unless so limited, such claim is directly anticipated, or untenable as not in.. volving patentable novelty.
52. t ...· ;
deVised',to :give 'lightoy- :means; of .the electric current are b1'Oil'dly. q.ivided into: tvvo' arc and tHehlcandescent. In :'fotrner two conductOrs or electrodlls are soarratiged that, when in: OplJrtttiott, they are slightly separated, with their axes in the same vertical 'line. The current leaps across the intervening space, tearing off and partially vaporizing particles from thl:lopposed. ends of the electrodes, and developing heat and light in the ends of the electrodes and' in.the flying particlas between them. ' In order to provide a current which shall be as effective as possible at the place where it develops light, riot'only the conductors,which bring it from the source of supply, hut also the electrodes themselves, forming part of the conducting circl1it,'are deVised to present but small resistance to the passage of the current. The effective resistance begins when the break in the circuit is reached. In an incandescent lamp there is no break in the circuit, but there is introduced into it a piece of poorly conducting material, which is so arranged that its resistance to the passage of the current will develophelltsufficient to bring it toa state of incandescence. The wires which conduct the current to the place where it is thus developed by resistance are sodevised as to present but small resistance to its sage. The effective resistance begins where the piece 'ofpoorly conducting material (the butner otilluminant)is placed, and the lamp expires when is consuiried,breaks 01' wears away. The longer the life of. burner the loJ:>ge'r the life of the larop, more ableit becomes forpractical.electric lighting. The selection of materials for the var.ious parts of the circuit thus formed, their mani pulation, arrangement;andope1'8lion;have fOJ;,many years ocoupiedthe attention of expei'ime:n:terll,' and of theirIabors, from time to time, constitute the state of the art of incandescent electric lighting. The patent sets forth that" the object of the invention is to produce electric lamps giving light by incandescence, which lamps shall have high' resistance, so as to' allow of the practical subdivision of the electric light."By the phrase "su'bdivision of the electric light" is meant such a subdivision of tbe electrlccurrent that at several ilJuminating foci, supplied from the same sootce of ele(ltl'icity, there shall be developed 'lights- of moderate intensity,'"""""Comparable to those given out by ordinary gas jets,--,-artd' the problem to be solved required 'a system and apparatus which would' admit of the development of these moderate lights in sufficient number, and at so Iowa cost, as to be commercially useful. _ Pridr tb1879 experimenters seemed to have reached the conclusion sUcdesswas to be attained, ifatall, by modifications ofthe arclamp, but up'to thattimeho larnP18rc oriricandescent, had been given to the public, which,with the mearts'thenexisting for generating and distribu1itlg theelectrlc current; ItCcornplished this result. Since the date of the pa,tent in suit electric lighting b)' lights of moderate intensity has become ·a'cbrlimetbialsuocess. Subl3equent improvements in the lamps and in other parts or 'the ilystemhave undOUbtedly contributed Diaterially to its development;' but the record abundantly shows that with .lamps such as the patent describes, constructed with the skill then krlOwn to the
EDISON ELECTRIC LIGHT
VNI,TEDBTATEl:\ :IllLECTRIC LIGHT'G CO.
and, under the conditions adm,ittedby the generating and conducting .apparatus then eJl:isting, it became practical for one generator to operate a considerable number of lamps, located at reasonable distances from it, and which at the same time were economical, durable, and cheap enough to be commercially useful, and so simple and reliable that they could be manipulated by the public. In view of the utter failure of the prior art to produce any such subdivision of the electric light, a lamp of this kind, which was capable of economical use in factories, large buildings, and in smaller buildings contiguous to each other,-in other words, available for isolated lighting,-should be considered commercially successful, though further development were needed to it to compete with gas for domestic lighting on even approximately eq\lal terms. What, then, was the contribution to this solution of the problem which Edison gave to the world by the patent in suit? Commercial and domestic exigencies required that the lamps should be so a,rrallged that each derived its power independently from a co.mmon source, and not through another lampl so that they could be individually lighted or extinguished at will, and the breaking down ora single lamp would not break the circudt. This is .effected by what is ctllied the" multiple arc" arrangemen,t, the wires leading to and from each light being so connected with the main conductors as to form a separate circuit for each light. In this arrangement no greater electromotive force is required for a large number of translating devices than for a single one, the current being graduated to the number employed. The lower the resistance of each illuminating conductor, the greater the current it requires, and as their number is increased, their individual resistances remaining constant, the size of the main conductors must be likewise increased, an increase which, in the prior art, soon involved Buch an expense for main conductors as to preclude commercial success. The amount of heat developed by the passage of an electric current is greater as the flow of the current is greater. It is also greater as the resistance of the conductor is greater, and all electric conductors vary in resistance directly as their lengths and inversely as their cross sections. Conductors of different Inaterials have also different specific resistances. The quantity of heat developed in a translating device is independeqt of, butthe degree of heat (i. e.. , the temperature) is dependent on, the extent of radiating surface. In the lamp shown in the patent these laws are availed of; the ratios of resistance of the burner to the resistance of the entire circuit. and to its own radiating surface being so graduated that a light of the required intensity is produced by the expenditure of so small an amount of current at each illuminant focus as to admit of main conductors sufficiently small, and therefore sufficiently low priced, to warrant the introduction of the system into public use. It is not necessary to enter into any elaborate discussion of the prior state of the art, so far as it bears upon the question of the patentable novelty of such embodiment of the principle of high resistance and small radiating surface. Irrespective of all patents or publications of others, the philqsophy of that method of producing light is undoubtedly found statedc::lell-rly and applied to the of-a.ll in-
candescent platinum burner, in Edison's French patent, No. 180,910, 'taken out May 28, 1879. Whether, under section 4887 of the Revised Statutes, that patent, embodying as it does his own invention, is or is not, Bofar as Edison is concerned, a part of the prior art, and to what extent; in view of thp. prior art, that patent discloses patentable invention;need not be determined upon this appeal, inasmuch as we are satisfied that there was invention in the substitution of the of the patent in '8uit for the platinum of the French patent, even though all knowledge as fa what should be:tbe ratio of resistance to radiating surface were 'pointed out, either in the French patent or elsewhere in the art. As sta·ted above, conductors ofdift'erent·materials have different specific reWithout going into details,it may be stated that among the metals platinum (inclucffng its alloys) is the only one which seems to haye given prdmiseof: success for inoondescent lamp burners. With a methOd of: preparation intended to remedy some of its defects, it is the mate14alofthe French plItent, alth()ligh the first claim of that patent is, gedera:l1y, for a continuous metalliti':cbnductor. The specific resistance of platinum is sufficiently high to admit· of its being raised to incandescenceby. the elect!'ic' current. When so raised it is not consumed in the presence of oxygen, buUs fusible ata temperature slightly higher than that at which it becomes'incllndescent. To produce light· it has to be maintained so near the melting pOint that a slight fluctuational' the current above the normal strength destroys it, and a large part of the French patent is the 'Cleecription of methods and a complicated apparatusca.lled· the" Thermal Regulator," intended to regulate the current so as to avoid any such raising· of the temperature. In his invention, as desoribedin the French patent, Edison departed from the existing idea of burners of low resistance, declared the commercial Rnd scientific necessity of burners of high resistance, although theymtlst be slender itnd presumably fragile, and attempted to find a method of protecting thelb from the effects of heat and oftheatnl0sphere.. It is said that the theretofore known laws of electricity should have taught everyone that an electrical incandescent lamp must have a burner of small cross flection and small radiating surface. The electrical laws had been known and had been recognized, but they did .not tell how to protect the materials which would make effioient burners from the destructiveeffeotof other forces than electricity to which they must be subjected; in other words, they did not tell how to construct a lamp. Edison; in his French specification, followed the principle of high resistance to an extreme; made platinum. burners with a resistance' of 200 to' 300 ohms, and described the method by whieh they were toLe prevented from speedy deterioration, "by destroying or intercepting the atmospheric action'?' He freed them from occluded gases by subjecting them to a high degree of electrical heat in a vacuum, and subsequently sealed them also ina vacuum. The platinum lamp, however,. did not achieve success. Inasmuch as' carbon has a specific resistance from two to four hundred times that of platinum, (hard, dense carbon having alower resistMcethan porous carbon,) is practically infusible, had been long before
EDISON ELECTRIC LIGHT CO. V. UNITED STATES ELECTRIC LIGHT'G CO.
suggested as a translating device, and used as such in many of the be supposed that when one lamps devised by the prior art, it skilled in that art was seeking a substitute for the platinum wire,something which would, by reason of high resistance and small radiating surface, apply the philosophy disclosed in the French patent, and yet admit of operation at higher temperature without melting,-he would have turned to carbon. But the record in this case clearly establIshes the converse of that proposition. Carbon, when exposed to the air at a temperature sufficient to produce incandescence, undergoes combustion. To remedy this difficulty earlier inventors suggested inclosing the carbon burner in a glass globe, from which air and moisture were to be excluded. Their globes were separable to allow of replacement of interior parts. We do not find in the words" suitably sealed," used in the King patent (British, 1845, No. 10,919) to describe a .modification of his lamp for Use underwater, sufficient warrant for the contention that its structure was to be so radically changed as to substitute· a light and compact all-glass globe, with irremovable burner, for the cumbrous apparatus with. its column of mercury, which he describes in detail. Neither the inclosing chamber of Crookes' nor the Geissler tubes (though being all of glass with wires sealed in, they would not leak) were used by the prior art to protect incandescent burners. By reason, in part, of that mode of construction, with separable chamber, the vacua which the earlier experimenters sought to secure eould not be maintained. Though subsequent improvements in exhaust pumps might give their apparatus a higher inHal vacuum, it would rapidly disappear in the leaking globe. It was against the oxygen or other carbon-consuming gases that all prior inventors sought to protect the burner, and later inventors tried to accomplish the same result by filling the chamber with nitrogen or some other gas which was inert, i. e., did not combine with the carbon. The carbons themselves were also subjected to processes for making them harder and more tenacious. and series of carbons were arranged to be brought into operation successively without opening the chamber. But one and all of these devices failed to secure stability in the carbon. A deterioration, variously described as a "disintegration," a "wearing away," a "kind of evaporalion," was soon fatal to the life of the burner. The record abundantly establishes the proposition that, so far from turning to carbon for his burner, which was to have so high a ratio of resistance to radiating surface, one skilled in the art would have been led, by the teachings of that art, to suppose that its instability would prove fatal to its use, irrespective of the size of the burner. Especially is it true that the use of small carbons, in the attenuated or filamentary form, which Edison had indicated in the platinum patent, would not have been thought of. Nor do we find in the suggestions of Lane-Fox, either in his patents (British, Nos. 3988, 4043, 4626, of 1878, and 1122, of 1879) or his other publications, any such appreciation of the cause of the disintegration of carbon, or any such proposed method of preventing it, as would controvert the conclusion that the art was looking elsewhere than to carbon for the burner which should have a future. Certainly v.52F.no.3-20
Lane.Foxdlimael£seemstdhave aooked for success rather to his metallic aHoys,:au.dhia compounds 'operated' in nitrogen or'othel' suitable gas, than: to carbotdn a perfect vacuunli.The literature ottheart fully tains thes:tatement of Mr. Schwendler, quoted in Telegraph Journal in 1879, that "WE! oan scarcely expect that the principle of incandescence will be made useo£.for practical illumination,", unless there be discovered a conductor without the defects of platinum, and "which does not combine at high temperature with oxygen." , In June, 1878, and January, 1879, (United StatRs pMents 205,144, 211,262,) Sawyer and Man indicated one of the causes which operated to produce this disintegration of the carbon, viz., that "some oxygen or other element or compound :remains in the lamp, "the carbon "occludingsuffioient8.iror oxygen to ren<lerits consumption a mere question of time," as ,least quantity:of"oxygen in a ,sealed lamp is sufficient to combust an indefinite qUllJu.tity,ofcarbQn." This they!'lought to remedy by heating tbe carbon pencils,.immersed in a bydro-carbon liquid, to an extremely high tempemture, thus producing, a hard and dense carbon, and one wbosespecific;:resistailce was lowered by that very process. They also, while the globe was on the pump, and nit-rogl'ln flowing in and outof:it;heated the "cal'bon to incandeacence, thus. driving out all the impurities 'and occluQ.e<hgases,which,.are carried out'oUhe lamp by the eu",entofinitrogen."· ,Believing thattpe deterioration ofthe carbon burner was; dua'to .the' presenoe ·of occluded ,oxygen,·· whiohescaped into the sealed chamber and promoted "combustion," they sought to secure stability by substituting'for the oxygen they had forced out by heating on the pump an atmosphe;re of nitrogen. d()nathey sealed their chamber, which .seems tobave beena,separable.ollle. ' ' Edison had experimented with carbon, before he devised the platinum lamp:of his French: pajjent. Subsequently to' .the date·ofthat. patent, apparentLy because that, lamp did not ,seem to promise the success he for,'he again turned to carhon" ,: In the COUrse of his investigations :be made a discovery as to the. cRl1ses of "disintegration," of which he availed himselftode!\o'ise a Jallip, in which carbon, ey-en in the filamentary form required. for aburner,whQse ratio of resistance to radiating surface was suoh as to apply the philosophy, pointed out in his French,patent, could be maintained for a sufficient length of time to become .· a :commercialsU()(Jess.· At, .the I date of' the application for the French patent he had apparentlyreacnedonly the point that "pencils [not filaments]of.carb6n, mtnalso beJreedfrom ,aidn. this manner, and be brought to stich a :temperatulle that thecarbon'becotnes pasty, and if it is then alloyved to cool itis very homogeneous and.hard. l ' The knowledge that practical stability could be given to a carbon filament was not gained until October, 1879. Thepatent insuit:setsforth that theretofore "light by incandescence bas been . obtained fri:lm . rods of ca.rbon. of one to four obms resistance, placed inclosed, vessels, In which the atmospheric air has been replaced by gases, that do not combine chemically with the carbon. The vessel holding thebU1'ner has been composed of glass cemented to a met.allic
EDISON ELECTRIC LIGHTCO;V. UNI'l.'EDSl.'ATEs ELEdrRIC LIGHT'G CO.
base, [or, as the eviden(le in this case shows,sometimes to a glass base. ) The leading wires have' always been large, so that their resistance shall be many times less than the burner, and in general the attempts ofprevious persons have been to reduce the resistance of the carbon rod. The disadvantages of following this practice are that a lamp having but one to four ohms, resistance cannot be worked in great numbers in multiple arc without the employment of main conductors of enormous dimensions; that, owing to the low resistance of the lamp, the leading wires must be of large dimensions and good conductors, and a glass globe cannot be kept tight at the place where the wires pass in and are cemented. Hence the carbon is consumed, because the-ra must be almost a perfect vacuum to render the carbon stable, especially when such carbon is small in mass and high in electrical resistance. The use of a gas in the receiver at the atmospheric pressure, although not attacking the carbon, serves to destroy it in time by 'air washing,' or the attrition produced by the rapid passage of the air over the slightly coherent, highly heated surface of the carbon. I have reversed this practice. I have discovered that even a cotton thread properly carbonized and placed in a sealed glass bulb exhausted to one-millionth of an atmosphere offers from one hundred to five hundred ohms resistance to the passage of the current, and that it is absolutely stable at very high temperatures. [Here follow further statements as to other carbon substances and their manipulation.] By using the carbon wire of such high resistance I am enabled to use fine platinum wires for leading wires,as they will have a smaIl'resistance compared to the burner, and hence will not heat or crack the sealed vacuum bulb. [The burner being plaoed on the glass holder,] a glass bulb (is) blown over the whole, with a leading tube for exhaustion by a mercury pump. This tube, when a high vacuum has been reached, is hermetically sealed. * * * The invention consists of a light-giving body of carbon wire or sheets COiled or arranged in such a manner as to offer great resistance to the passage of the electric current, and at the same time present but a slight surface from which radiation can take place. The invention further consists in placing such burner of great resistance in a nearly perfect vacuum, to prevent oxidation and injury to the conductor by the atmosphere. The current is conducted into the vacuum bulb through platina wires sealed into the glass." Edison's invention was practically made when he ascertained the theretofore unknown fact that carbon would stand high temperature, even when very attenuated, if operated in a high vacuum, without the phenomenon of disintegration. This fact he utilized by the means which he has described,-a lamp having a filamentary carbon burner in a nearly perfect vacuum. Although all-glass globes, with leading wires passing through the glass and sealed into it, had been used before to preserve the conditions of the interior of a chamber from the effects of leakage at the joints, and although the prior art, including the French patent, indicated that subdivisionf)f the electric light was to be obtained by the use of burners of high resistance arid small radiating surface, and although pencils (}f car-
bon:had been tried in,Jmperfect found wanting, it was in. vention, in view of the teachings of tbe art as to tbe disintegration of carbon under the aQtiOl1,oi an electric purrent, to still select that sub· stance as a suitable 'material from wbich to construct a burner much more attenuated tban had ever been \lsed before, reduced in size to the filamentary form inwhicb economy of construction requires that it must be used in order to aVltil of tbe philosopby of bigb resistance and small surface, l;l.nd so to combine old elements that tbe disintegration due to "air washing".ehould be practically eliminated, and the burner thus become (lommercillJly stable. It is true tbat carbon burners still break down, tbat. the irliliprovements neither of Edison nor of other in· ventdrsbaYe made theiu ,apsolutely stable, and in a sense it may be said tbatEdison only made ttbemmore stable than tbeywere before; that it isa mere maiter of degc$I' But the degree of difference between carbons ihat la.stedonebour that lasted bundreds .of bours seems to have .been,preciselytbe!d.ifference between failu:re aqdsuccess, and the combination which firste achieved the result "long desired, sometimes sou.gqt:and never a invllntion. It,isalso true combination and which secured apntl.Cticallyperfect V8;Ciluum by he&ting the burner while the exhaust pump was at work, allQi' subsequently se!lling the globe without introducin!l;a foreign gas,is set out. by Edison in his. French patentns a means ofeffecting such a qhangEl in tbe condition of platinum as would permit of its being raflled to bigher temperatures without rupture, cracking, or diminution of weight by But the eviderke shows that the platinum lamp did not acbifve sucCess, and we think there was manifest in,ventio!l iathe substitution of carbon freed from occluded gases, and placed in a nearly perfect vacuum. The change of material involved a reorganization of the lamp. Dispensing with the thermal regulator"which was .an essential part of the structure of the French patent, it developed new properties in the lamp by reason of the enormous dWerences between the resistances and the melting points of the two materials; it utilized the discoveJ;y of that cause ("air-washing") of the instability of carbon,which seemed to preclude all hope of its future usefulness as an illurllinant. Finally and principally, by presenteQ, .thecompletecombination of elethe substitution, ments, which for the· first time in the art produced a practical electric under the authorlight. We are of tbeopinion that onr ities such a ,substituticlP' of material is invention. Experts called for· the defendant han.teetifiedthat sucb change ()f ma.terial involved no invention, ;because for platinum, of carbon of any size, operated in a vacuum, would be obvious to one skilled in the art. To this proposition we cannot assent. SawyerandMan were skilled in the even after they had.1earned how to force out the occluded gases; and withdraw them from tl).e lamp chamber, they turned away reltdy t9,'theirnands, feeling no,doubtthat they were following. the teachings of the art in seeking stability by the use, not of avac1:1um, but of a nitrogen a.troQsphere. Edison was skilled in
EDISON ELECTRIC LIGHT CO. II. WUTED STATES ELECTRIC LIGHT'G CO.
the art, but after he had the nearly perfect vacuum of the French patent, secured against leaking by the all-glass globe of Geissler and Crookes, it was only after months of patient and persistent experiment that he found, in the substitution for his platinum of a filament of carbon, the success he had long sought for, but not till then attained. The second claim of the patent is broad enough in its phraseology to ('over the invention above set forth, at least when the burner is a <mrbon filament. This last word is not specifically defined in the patent, though it therein appears for the first time in the art. It was a common English word with a meaning sufficiently plain to indicate that the cross section of any article which it was used to qualify must be so small as to be thread-like; and we think a sufficient indication of what that size is would be afiorded by an examination of the ordinary threads in common use. An examination of the patent, however, indicates its dimensions with more exactness. It is to be fragile, so small in cross section that, compared with older carbon rods, its use is a "reversal" of former practice. One of the substances suggested in the patent to be used as a burner is to be reduced to .007 of an inch in diameter. Ordinary cotton thread, also suggested in the patent, has varying dillme-ters, the largest in common use being 1-64th of an inch. The patentoffice model has a diameter of about 1.66th of an inch. The evidence fails to satisfy us that the prior art furnished any burners less than twice this size. In contradistinction to thel'le earlier burners, Edison .oalls his burner a " filament." The term is apt, and we do not think he was required to specify, by thousandths of an inch, its precise maximum and minimum. Surely no one could doubt that burners nearly approaching in size the examples of his filament, shown in the patent, would be filaments, nor that burners nearly approaching in size the earlier rod burners would be rods. The:defendant's burners are smaller in cross section than the cotton thread of the patent-office model, and indisputably lie wholly on one side of the dividing line between rods and filaments, which, therefore, for the purposes of this suit, need be no more closely defined. The carbons which defendant operates in a high vacuum, in all-glass chambers with platinum wires sealed in, and which by such method are not exposed to air washing, and are thus rendered practically stable, are filamentary in size, and therefore filaments, within the meaning of the second claim, unless that word is to be qualified as defendant suggests. That it is to be so qualified by importing it a "coiling" of the burner is unwarrll,nted in view of the fact that the pat.ent refers to both coiled and uncoiled threads, and the third claim spe.cifically covers. the coiled form. The first claim is the comprehensive .one, intended to include-and by its use of the words, "made as described," in fact including-the principal invention, as the draughtsman understood it, to wit, the burner, which was to subdivide the electric light by its ratio of resistance to radiating surface, and also th.e subsidiary inventions '; of coiling when desired, either as effecting that ratio or ·as a against flickering; (2) of securing the burner to R!1d (3) of providing a place for its operation, to wit, .theex-
hausted'ldl:.Lglalls:globe, insure practical stability. To cover each of thes\dli'Ventions a'separate specifi,<rclail'il/is made, and the secondclaim seems dearly intended to cover the combination of parts which secures the stability of the burner, irrespective of the fact whether it is coiled or clamped to the leading wires or secured by the plastic combination of the fourth claim, is made out of one or other of the vatieHesofcarbonlnentioned in the patent,' or even out of some other known variety not mentioned therein, irrespective also of the fact whether its' resistance is higher or lower, except so far as its filamental character and: its· designed function would determine the measure of that resistance; 'rhiscoDolusion seems plainly indicated by the peculiar phraseology of the claim. It'ia for II the' combination of carbon filaments with a receiver made elltirely of etc., and from which the air is exhausted, for the purposes set forth;·!' that is, for the purpose of preventing the disintegration of the burnel'resulting from air washing. All the experts and all the counsel agree that the words" carbon filaments" should read "a carbon fibnnent," because the com bination of the patent contemplated only the incandescence of a single filament in each lamp. This is quite correct, but the words thus altered found their place in the claim through nornere clerical error. Inapt though they may be to describe the individual concrete combinations which were to be protected against infringement, they are illuminative of the effort of the draughtsman to secure his exhausted all-glass receivers in combination with carbon filaments of all kinds, and he used the plural, omitting the phrases "of high resistance" and "made as described,'" used in the first claim, in order to make sure that he should not, as' to this second claim, be confined by constrUction to anyone variety of filament. For this reason the further limitations, which defendant seeks to read into this claim, viz., that the filament tn'Ustbe one of' high specific resistance, or of at least 100 ohms resistance, cannot be accepted. The seoondclaim maybe thus paraphrased: The combination of carbon, filamentary or thread-like in size, and properly carbonized, used as an illuminantin an. incandescent electric lamp with a receiver made entirelyof glliss, and from which receiver the air is exhausted to such an . eJitentthat disintegration of the carbon due to the air-washing action of surrounding gases or to any other cause is so far reduced as to leave the carboriprllctically stable. ·Defendant's lamps are plainly infringements of the second claim as thtisconstrued. Defendant further contends that the patent is invalid because it does not so describe the lamp as to enable a person, skilled in the art at the date of the patent, to make a practically useful structure. The evidence ofthe:witness' Howell seems to us a conclusive answer to this contention. He made,as he testifies, according to the directions of the patent, and using only processes known to the art before its date, incandescent lamps such as the patent describes,which lasted 600 hours. Defendant criticizes this evidence, because the witness the filaments made by him to the action of the' electric current during the process of exhaustion.
EDISON ELECTRIC LIGHT CO. fl. UNITED STATES ELECTRIC LlGHT'G
But the patent repeatedly directs that the vacuum shall be high, and nearly perfect. Sawyer and ,Man had, prior to the date of the patent, shown that there were occluded, in the carbon itself, and in the various internal parts of lamp chambers, gases and impurities which are set free by the passage of the current. Manifestly, if they were not removed before sealing, the nearly perfect vacuum would soon disappear. Edison's French patent also details a process for forcing them out of platinum and removing them while exhausting is going on. A person who was sufficiently skilled in the art to know of these earlier. publications, and was carefully solicitous to conform to the directions of the patent, would naturally have resorted, as Howell did, to this method to secure a vacuum free, so far as might be, from the intrusion of such occluded gases. !tis contended, however, that this process of "electric heating on the pumps" in effect produces a carbonization of the filament; that it is now used as a part of the process of carbonization; and tbat, because thEl patent simply directs that the filament be "properly carbonized," because electrical heating is now used with the understood object of supplementing the work of the carbonizing furnacEl, because Edison has always thus heated his filaments, and because such additional carbonization is necessary to make a practical Inmp under his patent,therefore he has either purposely suppressed an essential element of his process, or has failed to give tbe full, clear, and exact description of it which the statute calls for. To this proposition we cannot assent. It is immaterial that the philosophy of electrical heating on tbe pumps is better understood to.day than it was in 1879, so long as the requirements of the patent would Bothe complied with by one skilled in the art unless he did in fact so heat the filaments. Whether he beated to carbonize, or to secure a nearly perfect vacuum, the result would be the Bame,-an' operative lamp produced by following the directions of the patent with the ordinary skill of the art, and that is all the patentee was required to show. The other defenses interposed by defendant may be more briefly noticed. The patent in suit was issued January 27, 1880. A patent for the same invention was issued in Canada, November 17,1879, (No. 10,654,) the term of which, expressed on its face,was five years; but the Canadian statute gave to the owner of the patent the right to an extension at his option, on thepayml:lnt of a required fee, for the furtberperiod of 10 yenrs. On l\1ay 4, 1883, the owner paid the fee requiJ:ed, and on October 30, 1883, obtaiqed certificate of extension. In Bate Refriger(tting 00. v. Hammond, 129 U. S. 164', 9 Sup. Ct. Rep. 225, it was held that, so far as the term of a Canadian statute operated to curtail the term of the United States patent under section 4887, Rev. St. U. S., it should be regarded as a continuous term for the entire period. It appears, however, that on March 5, 1880, a patent for the same invention was granted in Sweden, the grantee of which subsequently failed to prove, as required by the law of that country, that the invention was ·'being constantly practiced within the kingdon." Thereupon, on March 5, 1883, the Swedish patent right was lost and for/aited. Defendant
Obhtends that in consequence the Canadian patent expired on the same day,March 5, 1883,0l',if it continued till the expiration of the first five years expressed on its face, viz., November 17, 1884, it could not, by the payment of fees6r the certificate of the Canadian commissioner of patents, be extended for the additional 10 years. For that reason defendantcontends that the case at bar is distinguishable from Bate Reji'igera'ttng Co. v. H(lffmrUYl'6d, and that the patent in suit expired with the Oill1adian eith.er on March 5, 1883, or on November 17, 18154, priort<J'the beginning of this action. The Canadian statute provides as·'foH6ws: !:AQJnveJ;ltor shall not. be entitled to a patent for his invention if a pat· ent in any other country shall have been in existence in such conntry mOre than twelve months prior to the application for such patent in Canadiv, "iid'if during such twelve months any person shall have commenced to maQUooture in Canada·thearticle for \yhich :such patent is afterwards obperson shaltcon.tinlle to JuWe tbe right to manufacture and sell notwithstandlng such patent; and under any circumstances. when .l!'. exists. t):le Canadian· patent shall expire at the earliest date at, whl'ch any foreign patent for the same invention expires." . I... · , . The soundness of the defendant's contention depends on the meaning, urlder !Canadian law, of the phrase" where a foreign patent exists," as used in this statute. Hthat phrase is confined to foreign patents which exist before the relevant Canadian patent is issued,. the loss and of tbeSwedish patent right in no way affected the. Canl:ldian patent to meaning of this phrase,has not been declared by the Canadian courts; but a careful examination of the given by the Canadiai 'lawyers who have testified as to its practicalcollstruction by ;govermnent, and have given their professiopal opinions as to its meatling in Canadian law, satisfies us that it is there used as covering only foreign patents which exist before the issue of the relevant Canadian patent. Weare of opinion, therefore, that neither directly (Pohl't. Brewing Co., 134U. S. 381, 10 Sup. Ct. Rep. 577) nor indirectly, through the Canadian patent, is the patent in suit affected by what to the Swedish patent. The failure to limit the patent in suit on its face toaehorter term than 17' years,l!lo as to expire at the same time with the prior foreign patent haVing the shortest term, does not affect its validity. Bate ReJrigernting Co.v.Hammond, 129 U. S. 151, 9 Sup. Ct. Rep. 225. Nor do we thirtk,thatvalidity is in any way affected by the attempted certificate of cor·reetion. The patent. as originally issued, being in every respect a regtiladyexecuted document, and the statute providing for no subsequent a.lteration thereof by the patent office, (except in cases of reii"sue, which this is not,) the action of the commissioner in indorsing it with an attempted "correction" was without jurisdiction. and wholly void. 'And in the absence of any provision of law contemplating the surrender of an original patent by the grantee or holder, except for reissue, we cannot find,in the request. to have such unauthorized correction made, any reason for holding. that the patent was by that act surrenderid.
It is further urged by the defendant that the snit abated on December 31, 1886, by reason of the dissolution of the complainant conseqnent upon its merger, at the date named, in the corporation" Edison Electric Light Company." Except for the statute of the state of New York, permitting consolidation, the original companies could not have thus merged themselves into a new corporation. The state, which thus provided for the consolidation of the creatures of its own creation, undoubtedly had the power to regulate the manner of that consolidation and the extent to which the functions inherent in their former life should be thereby suspended or destroyed. Among these functions was the conducting of suits, actions, and proceedings in courtaof justice. The right to appear as a party litigant was one which the corporation or artificial person obtained by the act of the state which created it, and it certainly has never been contended that because that creation was under state law such artificial person could not be a party litigant in federal courts. .When the state undertook to regulate the matter of consolidation, and the extent to which it should terminate the life of the artificial persons it had created by destroying their functions, it expreesly provided (Laws N. Y. 1884, c. 367, § 6) that"No suit, action. or proceeding then pending before any court or tribunal, in which any corporation that may be so consolidated is a party, or in which any such stockholder is a party, shall be deemed to have abated or been discontinued by reason of any such consolidation; but the same may he prosecuted to final judgment in the same manner as if the said corporations had not entered into the said agreement of consolidation; or the said new corporation may be substituted," etc.
The state, by this act, expressly avoided interfering with the continued exercise of the artificial person's functions as a litigant incases ",hen such functions were already in use. Therefore, being properly a 'party litigant in the. suit before consolidation, it would remain so not because the state statute ill operative to regulate the practice and procedure of federal courts in equity suits, but because, so far as the litigant life of the artificial person (properly a party to the suit when brought) is concerned, there has been no change, the only power which could destroy it having scrupulously refrained from doing so. As by the consolidation all the property and rights of the old company were transferred to and vested in the new, (Consolidated Act, supra, § 5,) and the new company succeeded to all the obligations and liabilities of the old one, the fruits of any recovery belong to the new company, and the provisions of an adverse judgment can be enforced only against it. The survival for purposes of pending suits is therefore merely nominal, but that is no anomaly; provisions of law allowing personal representatives to continue suits in the name of the original party after his death are common. Nor do we find any bar to the maintenance of this suit in the provisions of section 4898, Rev. St. U. S., that" every patent or interest therein ehall be assignable in law by an instrument in writing." Whether the bare legal title to the patent in suit passes with aU beneficial interest
r .. :,
in rthe:patent by the conllolidation to 'the new company, or whether some D1st:r(iment I'm writing' must ·stilL be i exeouted .to make such transfer· oom· continuing sufficiently: to. consummate thede.Johition whrchthecorisolidation act provided for ,""':'see'Ediaon Electric LiJ;;htOo.'V.Ne:w Haven'1iJlxJctric Co., 35 Fed. Rep. 236,) the,new company
wOlllid have the right 1loepntinue, under the name of the old one, pending:litigation which are ,in fact its own, with the same forclr and: effect as if it were itself complainant. 'We do not find in the va.riau.l introduced in evidence sufficient warrant; for holding interest in the subject of thecontrpvetsy to enable ,it to maintain the bill in its own name without joiningotberparties," norido,thefacts make out such a case that injunctioo,should be refused on any ,theory,of'laches or equitable estoppel by reasonliof·undue' delay'in,bringingsuitji,or acquiescence in known infribgerrients. ' .· , The deeree: of the oircuit'oourt is' therefore affirmed, with costs.
Courtol4ppeaZs, FOurth. Circuit.
, Claim 1 of letters patent ,No. 200',119, issued February 12,1878, to Henry G. AshtOn, for all· improvement Iiii' safety valves, consisting substantially of an ordinary spring yaJ,veW\th a POP-Vltll\\"8 chamber added, in combination with a valve seat, an inclosed spring discharge chamber, is void because of anticipation by the English! patent of 1872; No. SIll, to Giles. fiG Fed. Rep. 100, af;' firmed. ':': ' " ,!. '
J, ' "
9. BAME-]);l[UNT9J' PLAUt/:.
In his specHlcations Ashton statel! that his combination is very important "in alloalles where the steam'le prevented in any way from escaping freely from , the as is, ott!,n, the case,"· In another place he states that he proventll in the spring for the escape of such steam as may enter it, but these vents. are not mentioned in the claims, which cover merely the abQvecqmblJ»ltio,D, "a11'1'JlongEld to operate'as desllribed. Hetd,that the patent did hot coVill' th:e'ilsErof the vent holes.. 50 Fed. Rep. 100. amrmed.
Lettel'll Patent No. 299,1>081 lesued June 8,' 1884, to Ashton, for a combination of "muming chamber, surroundlDg a safety valve,' with a pipe communicating from the spring chamber to the 'outSide' air, was anticipated by patent 297,066, issued April 15, 1884"to Coale, whichcOVl/fs practically the same featuI'es, complainant haVing a preponderance of the evidence that Ashton was in fact the first failed to show inventor. 5OF1ed. Rep. 100; affirmed. '
A.ND JUNiOR P>ATENTS-EvIDENCE.
Appeal fromcthe CirctIit Court of the-United States for the District of Maryland. In Equity. Suit by the Ashton Valve Company against theCoal& Muffier & Safety Valve Company and others for infringement of patents. In the circuit C(1)urt the bilbwaa dismissed. 50 Fed. Rep. 100. Complainant appeals. :Affirme!i.