CONSOLIDATED ELECTRIC STORAGE CO.
ACCUMULATOR CO. v. CONSOLIDATED ELECTltIC STORAGE CO. et al. (Circuit Court, D. New Jersey. December 13, 1892.)
PATENTS FOB INVENTIONs-INJUNCTION TEMPT.
CoMITY BETWEEN CmCUITS-CON·
Where a court issues an injunction to prevent of a patent solely upon the authority of a decision in another circuit in a suit between the same parties, it will, on a motion for an attachment for contempt in violating the injunction,follow the construction which was placed upon the patent in such other circuit. In contempt proceedings to punish an alleged violation of an injunction against the infringement of reissued letters patent No. 11,047, granted December 17,1889, to Joseph Wilson Swan, assignor to the Electrical Accumulator Compan;r, for an improvement in sec.mdary batteries, the question being as to whether, in the plates now made by defendants, the active matelial, or material to become active, is packed in the perforations of the plate exclllf!ively, or is it also made to adhere to the surface of the plate, the court will not adjudge them guilty of contempt when there is a direct conflict between the expert witnesses as to the fact; for, the proceeding being criminal in its nature, defendant is entitled to the benefit of any reasonable doubt.
In Equity. Bill by the Accumulator Company against the Con· 80lidated Electric Storage Company for infringement of reissued letters patent No. 11,047, granted December 17, 1889, to Joseph Wilson Swan, assignor to the Electrical Accumulator Company, for an improvement in storage batteries. An injunction was heretofore granted on the authority of the decision by Judge Coxe in the circuit court for the southern district of New York in Electrical Accumulator Co. v. New York & H. R. Co., 50 Fed. Rep. 81. The cause is now heard on a motion for attachment against defendants as for a contempt in violat· ing the injunction. Motion denied.
F. H. Betts, for the motion. William H. Kenyon and C. L. Mitchell, opposed. GREEN, District Judge. The defendants are charged with the willful violation of the injunction heretofore granted by this court, Whereby the defendants were commanded and enjoined"Forever to desist from directly or indirectly making or causing to be made, using or causing to be wed, or vending to others to be used in any manner, any secondary batteries containing or embodying the invention secured to Joseph Wilson Swan on the 17th day of December, 1889, by letters patent No. 11,047, for an improvement in secondary batteries, which invention was described therein as follows: 'A Jf'>rforated or celluiar plate for secondary batteries, having the perforations or cells extending through the plate, and the active material, or materials to become active, packed in said perforations or cells only, substantially as described.' "
It is alleged by the complainants that the structure now made, used, and sold by the defendants is practically the same structure which they were enjoined from using, making, or selling, and that, if such structure is in any respect whatever different therefrom, the difference is an unsubstantial one. introduced for the very purpose
of e",asion, and, in effect, still appropriates the essence the inventioll.sec'ured to Mr. Swan. . . .. The cause in which the enjoining decree of this court WaB made was never or presented to it for adjudication upon its merits. A suit wholly identical in character, between practically the same parties, t(lUchingthe same invention,· and alleging the· same acts and cau,seso£ infringement, Was at issue in the circuit court for the southemmstr1.ct of ,New "york, and was there finally determined in favor of the complainants; the decree upholding the letters patent referred to,in all respedA!l, and sustaining the invention thereby se· cured to Mr. Swan as clearly having patentable novelty. Electrical Accum1,1lator Co. v. New York & H.,R. Co., 50 Fed. Rep. 81. A.s a the defend,ants were duly ·enjoined by result of that court from all further infringing acts. This adjudication being of this court, upon the well-known doctrine of it wl¥JJmmediately followed in. this circuit; and, practically. without any an enjoining decree $imUar t<> the one made in New York was made in .this circuit. It follows that the <;onstruction which the circuit CQurt in the district of :New York gave to the 'letters patent in this case is the construction supposed to be adopted by this court in its action granting the injunction; and such will be adhered to in the consideration of this motion. In fact, upon. l;l.Urried examination that has been given to the matters involved on motion, I cannot see how any other or. broader construction.' could be given to the letters patent than has been given in the suit referred to by his honor, Judge Coxa, The only claim made: by the inventor exprel:lsly declares tMt the main characteristic of his invention consists in a plate for secondary batteries, having cells or perforations extending through the plate, and the active material, or materiaJ. to become active, packed in said perforations or cells only. The word "only" clearly means "exclusively," and that the inventor meant, therefore, to say that in his invention the active material, or the materiaJ. to become active, was to be placed or packed in the perforations or cells of the plate, to the entire exclusion of every other receptacle or part of the plate. Judge Coxe, in his opinion, tersely says:
"The real invention of Swan was the combInation of a SU1lport, plate, or grid, a perforated· plate, with active material so combined therewith as to exist only in the perforations."
I concur fully in that conclusion. Adopting, then, this as the true and legaJ. definition of the inven· tion of Mr.' $wan, and which the defendants. were enjoined from using, making, or vending, does the structure now made and sold by them in, any wise infringe it? If it does, they have undoubtedly violated the mandatory order of this court. If it does not, this motion must go for nothing. The defendants place their sole defense to this serious charge upon the fact that not only do they pack the active material in the perforations of a grid or supporting plate, bUt, as well, and as an essential part of that structure, pack it upon the surface of the plate ; and they insist that grids forming part of a storage battery having active material packed, pressed upon, or
ACCUMULATOR CO, 11. CONSOLIDATED ELECT,RIC STORAGE CO.
otherwise affixed to lhe face of the plate, outside of the perforations, are not to be included within the purview of the injunction. The grid now made by the defendants has been somewhat changed in construction since the injunction was issued. The network of the crossbars within the outer supporting framework, that form the perforated portion, is considerably thinner, measuring in a direction through the thickness of the plate as a finished plate, than in the old grid. The perforations are smaller. There are now 625 perforations in the present grid. In the old grid, there. were 400. The outside frame is slightly raised above the level of the inside division or network bars, and the edges of these bars are tbinner, and more knife-like, than formerly. But these differences are mere matters of detail, not in any wise affecting the question under tion. If there were no other explanations given in excuse for the alleged infrill.gements than such as are based upon these changes in structure,the defendants would be wholly without justification. But they claim that, not only are the grids differently constrncted, bUt, as well, that the active material which they use is packed or made to adhere to the surface of the grid, and that such a combination of perforated plate and active material, packed outside the perfora· tions, and on the surface of the plate, is not within either the terms of the Swan letters patent, nor the con.struction placed upon them by the court in New York. The complainants deny, in toto, that any of the active material in the defendants' plates is outside the perforations. On this point, Mr. Vansize, in his affidavit, says:
"The said battEories [1. e., those made since the injunction by the defendants] nre composed of perforated plates of metal, [that Is, lead, or an alloy ot lead.] The perforations extend completely through the plate, and are substantially equidistant, with respect to each other. The active material is packed in the perforations, and completely fills the perforations, and such active materialls packed within the perforations only." "There is absolutely no difference between the battery plates and the cells ot battery formerly manufactured by the defendant company, and adjudged to be an Infringement."
In a later affidavit, he says:
"In most of the plates heretofore examined by me, and referred to in my former affidavit, the active material is substantially confined to the perforations only. There may be isolated points upon the surfaoo of these plates, or im· perfections or inaccuracies, which give lodgment to small quantities ot the active material; but such active material is not present, in any useful quantity, outside the perforations."
"For all substantial purposes, any active material lett upon the surface ot any of the divisionFl is of no value, because so small in amount, and so thin, that it has no coherence or permanency, but will flake off as soon as the battery is put into use, and must be presumed to have been so intended by the makers."
On the other hand, expert witnesses called by the defendant as positively declare that the amount of active material adhering to the surface of the plate, and not packed in the perforations, is quite thick and substantial. Prof. Brackett, in his affidavit, declares that, from inspection of the plates manufactured by defendants, from 15
to 20 per cent. of the aetive material is outside the perforations. Mr. Salom testifies that"Such surface layer of active matei:'1lll as Is found on all of defendants' plates is, when taken by itself, and entirely apart from such active material as is packed in the perforations, a more substantial and efficient layer, and vastly more substantial and efficient laYer of active material for the purpose of a stora."ue battery in the ordinary uses of such a battery, than the active layer of the well·known Plaute battery which is procured by electrical disintegration of the leaden support itself."
It is extremely difficult, not to say hazardous, for a court to dissect, analyze, (lnd weigh affidavits such as these, taken ex parte, and so contradictory in material statements, and to adjudge where the truth To aid the cOurt in arriving ata just conclusion, the witnesses should be subject to a· most rigid cross-examination. Failing that, there of necessity, be left in the mind a doubt, of which, in proceedings of this nature, the defendant is entitled to the benefit Is this strU,cture of the defendants the same as the structure in the New. York case? The affirmative is as strongly asserted by the one side as the negative is by the other. If it be true that the activeniaterial adhering to the. surface of the plate now made by the d.efeJldants is so substantial as to. be in quantity 15 to 20 per cent. of the whole, I can hardly hold that the strUcture is the same as heretofore adjudicated to be an infringement of the complainant's plate. . t;hat plate the material outside the perforations was adso very slight ill quantity as to be negligible. Personal inspection of the plate in question has not destroyed the doubt I franklY say that, as a nonexpert, I am unable to see how the adhesiO:p.- of the minute quantity of active material upon the knife· bll:\,de.edgeof the division bars.ofthe defendants'grid can possibly amount bothe percentage of the whole as testified to. It is to me almost incredible. But the sworn statement is before me, and I cannot reject it Two witnesses assert it as a fact. But one witness contradicts it. .I cannot, under such circumstances, give any great credit to the evidence of mere eyesight. With this doubt, then, as to the character of the defendants' grid, existing, I think I should not grant the motion for attachment. This proceeding is crin).inal in its nature and character, and the same rule should. govern as in the trial of indictments. The burden of proof establishing violation of the injunction is upon the complainant, and the defendants are entitled to the benefit of any reasonable doubt. The motion is denied.
ACCUMULATOR CO. v. CONSOLIDATED ELECTRIC STORAGE CO. et at (Circuit Court, D. New Jersey. January 17, 1893.)
PATENTS FOR INVENTIONS CIROUITS.
PRELIMINARY INJUNCTION -
On a motion for a pJ;eliminary injunction against the infringement of a patent a circuit court will ordinarily follow the decision of another circuit court upholding the patent and declaring infringement, especially when the parties are practically the same, and the acts complained of al'e iden-