ACCUMULATOR CO. t1. JULIEN ELECTRIC CO.
But we think a case for relief under section 4918, Rev. St., has not been made out. In the statutory sense, patents interfere only when they claim the same invention, in whole or in part. Mt3llufacturing Co. v. Craig, 49 Fed. Rep. 370. And in a proceeding under section 4918 the court cannot go beyond the claims, and consider generally the two patents as a whole. Id. It has been held that an interference does not exist, within the meaning of the statute, between a patent having a dominant broad claim and a junior pat· ent ha"Ving a subordinate specific claim. Morris v. Manufacturing Co., 20 Fed. Rep. 121; Pentlarge v. Bushing Co., Id. 314. Here the claim of Brown's patent, No. 331,762 is not coextensive with any of the claims of the Stonemetz patent, but is a very specific and subservient claim. Whether he shows patentable novelty to sustain his claim is a question not involved in this interference issue, (Rob. Pat. § 724,) and upon which we are not now called on to express any opinion. If there is no interference between the Stonemetz patent and No. 331,762, certa1nly none exists between it and No. 322,344, and, indeed, this particular part of the plaintiff's CllBe has not been pressed. A decree may be drawn in accOTdance with this opinion. BUFFINGTON, District Judge, concurs.
ACCUMULATOR CO. v. JULIEN ELECTRIC CO. et aL (Circuit Court, S. D. New York.
July 18, 1893.)
PATENTS FOR INVENTIONS-DURATION OF RIGHT-PRIOR FOREIGN PATENT.
The tests of identity of invention for the purpose of causing a domestic patent to expire on the expiration of a foreign patent, as provided by Rev. St. § 4887, being collated frOID the leading cases qf Siemens' Adm'r v. SeUers, 8 Sup. Ct. Rep. 117, 123 U. S. 276, and Commercial Manuf'g Co. v. Fairbank Canning Co., 10 Sup. Ct. Rep. 718, 135 U. S. 176, are: Is the principal invention of the domestic patent found in the foreign patent? Is the subject-matter of the one the same in all essential particulars as that of the other? Would a structure made pursuant to the foreign patent infringe the domestic patent? Could both patents havo bet'·.' granted in this country? The two patents need not be in identical garb, or employ identical forms of expression.
8. BllIE. Evidence of an intention to patent the same Invention In the two pat· ents is material and important.
Admissions, express or implied, that the two patents are respectively for the same invention as a third and earlier patent, issued in a third country, are material and important. The comparison should be instituted with the domestic patent as it was issued, and not as it may afterwards exist, after being cut down
SAME-EFFECT OF DISCLAIMER.
by Ii 41sclaimer and limited by the' !state of the art. It ,a patent, when granted, covel'$ an invention whicbWid previously by a. ,forli'tgn ,patent, it expires with the foreignpa1lent, the tact tb8.t it has, subsequently been' pared down t<> cover only. one method of,praeticmg the invention, or reStricted t<> a single claim.
SA:w-'PROCESS AND PRODUCT PATENTS.
Though the domestic patent claim the product,and the foreign patent the p1'()Cess,' still, where the prpcess makes the product, and the prodll,ctcan be made only by the process, the product and the process c<>nstl.tIlte one discovery, and the patents are for the same invention. MoslerSa.fe & Lock Co. v. Mosler, 8 Sup. Ct. Rep. 1148, 127 U. S. 354, and Plummer v. Sargent, 7 Sup. Ct. Rep. .640, 120 U. S. 442, follOWed.
§ 4887, ,not the date of appllcation therefor.
The date of issue of the domestic patent is controlling, under Rev. St. Gramme Electrical Co. v. ,llochhausen Electrio Co., 17 Fed. Rep. 838, 21 BIatchf. 450, Electric Light Co. v. United States Electric Lighting Co., 35 Fed.: Rep. 134, followed. The, right ro obtain an extended term of the foreign patent on applicati0llwithin a titne limited, if not avaned of by actual application within such time, does not constitute such a potential term in the foreign patent as to prolong domestic patent ,through. or into such extended term. 'Consolidated Roller-Mill Co. v.' Walker, 43 Fed. Rep; 575, 580, distinguished. Bate Refrigerating C<>. v. Gillett, 31 Fed. Rep. 809, Bate Refrigerating Co. v. HamJ;Dond Co., 9 Sup. Ct. Rep. 225, 129 U. S. 151, and Huber v. Manufacturing Co., 38 Fed. Rep. 830, 63 O. G. 311, 13 Sup. Ct. Rep. 603, cited.
TO EXTEND FOREIGN PATENT.
The international convention of March 20, 1883, ro which, among others, Spam; France and' the United States are parties, has not the force of a statute in the United States.
SAME-SECONDARY BATTERY PATENTS.
Letters patent N<>. 252,002, issued t<> Camille A. Faure, on Janw,try 3, 1882( for an improvement in secondary or sroragebatteries, are for the same invention as· Spanish letters patent granted to the said Faure on June 27, 1881, for term of 10 years, and said United States letters patent eX"pired on June 27, 1891, with the expiration of said Spanish letters patent. Brush Electric Co. v. Electrical AccumuIator Co., 47 Fed. Rep. 48, 55, distinguished. Brush Electric C<>. v. Julien Electric Co., 41 Fed. Rep. 679, 683, 685, cited.
In Equity. Bill for infringement of a patent. Decree dissolving injunction.
The first claim of the patent granted to Camille A. Faure, January 3, 1882. as limited by a disclaimer an electrode of a secondary battery t<> which the active layer is applied in the form of a paint, paste or cement, insoluble in the electrolytio liquid, was sustained by this court March 18, 1889. 38 Fed. Rep. 117. It was again sU!iltained on rehearing. 39 Fed. Rep. 490. On the 19th of October, 1891, an order was made permitting the defendants to amend their answer by setting up the grant and expiration of a Spanish patent issued to Faure, June 27, 1881, for the term of 10 years. 47 Fed. Rep. 892. Proofs were taken on this new Issue, and the cause now comes on for rehearing upon this issue alone.
Frederic H. Betts, for complainant. . C. E. Mitchell, William H. Kenyon, and Robert N. Kenyon, for defendants.
ACCUMULATOR 00· .,. JULIEN ELECTRIC 00.
COXE, District Judge. It is proved beyond question that. 81 Spanish patent was issued to Camille A. Faure June 21, 1881, for a term of 10 years, and that this patent expired June 27, 1891. If the Spanish patent was for the same invention as the patent in suit, it is manifest that the latter expired June 27, 1891. This is the only question: Was the Spanish patent for the same invention? Section 4887 of the Revised Statutes provides:
"But every patent granted for an invention which has been previously patented in a foreign country shall be so limited 8S to expire at the same time with the foreign patent; or, It there be more than one at the same time, with the one having the shortest term."
In the leading cases of Siemens' Adm'r v. Sellers, 123 U. S. 276, 8 Sup. Ct Rep. 117, and Commercial Manuf'g Co. v. FaiTbank Canning Co., 135 U.S. 176, 10 Sup. Ct Rep. 718, the supreme court has made the test of identity to depend upon the following propositions:· Is the principal invention of the domestic patent found in the foreign patent? Is the subject-matter of the one the same in all essential particulars as that of the other? In other words, will a structure made pursuant to the foreign patent infringe the domestic patent? Could both the patents have been granted in this country? Would a person skilled in the art, after reading the description of the invention covered by the Spanish patent, be able to construct the electrode described and claimed in the United States patent? In approaching the subject of identity, it should be remembered that Faure is a Frenchman, and that the first description of his invention was written in the French language. From this original it was translated into Spanish and English. Making allowance for philological differences, for errors and unavoidable changes in translation, and for dissimilarities in patent-office procedure, it could hardly be expected that the United States and Spanish patents would emerge from such an ordeal in identical garb, even though it were the avowed purpose of the inventor to make them the same. There seems to be no doubt that the application as filed in the patent office at Washington was almost an exact counterpart of the Spanish patent, and that both the pat· ent and the application were translated from one and the same French original. "It is evident," says the complainant's brief, "that the original American application was very much like the Spanish patent. The claims were differently phrased, but it is quite possible that they were intended by the translator to cover the same SUbject-matter." Faure's invention was described by him in the same language, and was presented for their approval to the patent officials of three countries differing widely in their methods for the protection of inventors. If he had made any new discoveries between the date of the French patent and the dates, respectively, of his application in Spain and in the United States, he certainly failed to note the fact in either specification. The proof he did make such discoveries is very unsatisfactory.
"rrhis\being so, it preeludes the ideath'at Faure had along the same liries, which he was desirous of protecting. Like Mr. Brush for instance. 47 Fed. Rep. 48, 51, 54. Clearly,it was his intention to take out a patent for the same invention in the two countries. This is not disputed. One of the experts for the complainant says: "These patents [Faure's] intended to cover the same invention, differ widely." Faure had taken an important step forward in the construction of secondary batteries, which may be broadly stated as an improvement on the method of Plante, by adding directly to the support the layer of active material which Plante produced by disintegration after weeks and months of effort. This invention Faure described; thiEl invention he endeavored to have patented in France, Spain and the United States. It is now said that he failed in this undertaking; that he patented one invention in Spain, and another in France and in this country. It is argued that this result was accomplished because Faure failed to patent in Spain the invention in the form in which he had actually embodied it, and in which its sue· cess had been proved in France-the one form which makes it thoroughly practical and useful. In other words, that he failed to describe the most valuable part of his invention although fully known to him at the time. The inquiry naturally suggests itself, how can this be? How can such a result be reached-an attempt to patent one invention and the actual patenting of another-without the participation or knowledge of the inventor? It will be found on examination that the supposed differences, which are so greatly magnified, are differences of form and not of substance and grow out of different environments and forms of expression. The inventor has described several ways in which the active layer may be applied and it is not surprising that the officials of Spain should have given prominence to one way and those of this country to another way. Again, there is an express admission that the United States and French patents are the same, the specification of the former stating that the invention was "patented in France, October 20, 1880," and in the oath attached to the application Faure swears that the invention ''has been patented to him by letters patent of the French government." There is also an admission, at least, by implication, that the Spanish and French patents are the same. The Spanish law permitted a patent for 20 years, "if it has for its object new and original inventions," but if the inventor had obtained a patent therefor in one or more foreign countries the term was for 10 years orily. The French patent had been granted, (October 20, 1880,) when the application for the Spanish patent was filed, (April 16, 1881.) The inventor asked for a 10 years' term in Spain presumably because he knew that he was not entitled to a 20 years' term, the invention having been patented in France.. Furthermore, the proceedings instituted on behalf of the com· plainant to reinstate the Spanish Pl\tent proceeded upon the theory
ACCUMULATbR CO. V. JULIEN ELECTRIC CO.
that the French and Spanish patents were for the. same invention. A concession that· the French and Spanish patents are the same, is also a concession that the United States and Spanish patents are the same. The latter two cannot both be like the French patent without being like each other also. The description of what Faure discovered was the same in both cases. If the domestic patent is for another invention, the patent should have been granted to the patent-office officials and not to Faure; the changes are theirs and not his. Not only are the two descriptions from the same source, but the drawings, except in a few unimportant details, are identical. It is a mistake to start out with the hypothesis that the United States patent in terse and perspicuous language, describes the application of the active material in the form of paint, paste or cement, wd stops there. It is a mistake to compare the Spanish patent with a patent thus assumed to be clear in language and limited in scope, for it will be found on examination that neither patent is free from ambiguity, and that the real invention of Faure is as plainly proclaimed in the one as in the other. 'l'he comparison should be instituted between the patents as they were issued, and not between the Spanish patent and the United States patent as it now exists after being cut down by a disclaimer, and limited by an art existing in this country, of which the inventor knew nothing; If a patent, when granted, covers an invention which has been previously covered by a foreign patent, it expires with the" foreign patent, notwithstanding the fact that it has subsequently been pared down to cover only one method of practicing the invention, or restricted to a single claim. A disclaimer cannot add a new invention to the patent. Assume the case of a foreign patent and a United States patent subsequently granted in language precisely identical. Assume that, pursuant to the decision of the court or for other reason, the inventor has disclaimed all of the claims but one and that one is so restricted that it covers only one feature not made prominent in the original patent; can it be said that this proceeding wholly changes the scope and purport of the patent, making it, in fact, a patent for a different invention? If so, disclaimers will be put to new and important uses never dreamed of before. When it is remembered that Faure intended to claim broadly in both patents all described methods of adding the active material, giving no especial preference to anyone, there will be less difficulty in perceiving that "the principal invention is in both." But let it be assumed that the inquiry is: Was the invention of the United States patent, as now construed and limited, previously patented in Spain? Does the Spanish patent cover the method of constructing a secondary battery electrode to which the active material, insoluble in the electrolyte, has been mechanically applied in the form of a paint, paste or cement prior to immersion in the battery fluid, so as instantly to become porous? Does it cover that? If so, it must be conceded on all sides that
\t,J!\e.f()J.': i;he Both the Spanish and AmericaJ,l 'pa,te#lil relate .to secondary batteries and to improvements upon the .method of Gaston Plante.. Other similarities and differences by placing f;lide by side the parts of the 'which relatl;! chiefly to the invention when limited as above ..stated. .
An of accumulatIon is obtained and rapidly manufactured, first, by cO'IJerin,q with deposits or galvanic cOhtings, or coatings of a chemical precipitate, the elements of the secondary piles (of'the inventor) wit.h a· spongy or porous c9at Of lead. of the thickness that may be deemed
fit. ", .
The supporting surface is of lead or any other material. and is entered 'by either galvan.o'j)l.asti.c S'. or. by a . deposit. in t.he J'orm of a.paste of some or an oxide maUer, that may be of lead. or any salt of lead Whatever, insolubl\',in ,the liquid of the .pile, or wit.h one o,r more salts of metltls capable of or electrical llnergy such as manganese' and oth·ers. The PQrosityof the leadH:\le reduced as well as the 'oxidized) can be increased by the incorpotiation of inert matters, as, Jor wample, oake; in the coating of the oxide or in. that 01 the lead For the partitions or.com.partments. the object of which is to prevent the separation Bnd fall of the porous lead, felt, cloth. asbestos· board, linen or any other porous matter not susceptible of alteration in consequence of this use, may be used: the dbject of this' porous matter. whateV'er it may be, is to hold fixed in its place against the support, the active composition, II\ fact, we could employ for. the same purpose wire ·cloth of lead, or ",ny other prOper metal, but, in such case, it will. be necessary to secure to the support this porous layer, for the purpose of holding the .composition; different means can Le adop.ted for securing it, and this will depend upon the nature of the support; for example, rivets of lead, or of any other convenient material; that is to say, a II\aterial. 'such that the action of the liquid' ofthe!;latterYJlPoJi it not cause the fOl'mationof injurious products., . Instead of rivetII placed· at different points, a cllntinuol!S pressure may be obtained by means of threads of wool, placed across th'ewhole. Figure first repreSents a couple formed by two elements; A and B, each of
.U. S. PATENT. An untimit.ed accumulating power is obtained. The electrodes are made bv the addition. or application of a laye"r of an active material-metal, metallic oxide of salt-which layer is or at once becomes poro u's! or spongy, to suitable plates or supports, which may be of suitable non-metallic substances as well as of metaL This active material may . be applied in various ways, so' as to obtain a layer of' the desired depth, as in .theform ofpp.i'llt, paste or cement, in the form of a deposit by galvanic action or chemical precipitation, or otherwise. In order to render the active layer more poroas. the material composing it has preferably inert material-such, for ex.ample, 1,1,8 cruslled coke---,mixed with it. The llctive layer is retained in position .upon the support by means of an openwork. perforate or pOrous medium or partit.ion. which, while allowing free percolation of the electrolytic liquid. prevents the active material from sepa· rating ·either spontaneously or by the slight jarring to which it is liable to be subjected. The retaining medium or partition is made of material which is not liable tO'be acted upon by the electrolyte used-for example. of felt, cloth, asbestos paper or board, netting of cane. gutta·percha, or caoutchouc, wire-cloth. of lead or otber suitable. metal, porous earthenware, and the like, The fastening can be made by rivets. cement. or winding with woolen or cotton yarn, or otherWise. , Secondary batteries, like ordinary galvanic batteries. can be made with a series of cells side by side, or one above the other. with the intermediate walls common lO. the two adjacent cells. In making sllCh batteries it is advanta. geous, and in some cases essential, to apply a non·porous partition of rubber or o.thersuitable substance to the plates. 80 as to cut off all communication be·t'ween the cells. This combination of non·lior-ous diaphragms with the elec'rodes in such secondary batteries constitutes II portion of tbe invention. Fig-iues 1 and 2 are views in vertical section of single cells. the cell shown in ]l'ig. 2 being provided with porous media for retaining the active layer on
ACCUMULA'i'6R cO. t1. JULIEN ELI1:CTRIC CO.
which formed by a thin of lead,. covered with a por!>us meta,lljc coating, and submerged in a rectangular vessel, containing watllr w.ith sulphuric acid. Figure second shQwsin vertical section a circular couple or cell, formed by an element of lead, A, and a rod or plate, B, of lead </1' carbon; a is a porous vessel, and D, the extlirnal vessel containing the acidujated liquid. . An intimate mixture of coke and sulphate of lead is then prepared in such a way that it may be porous, and for this purpose may be used either crushed coke, sawdust, or any other ,similar substance that may be convenient: this mixture is placed between the vessel a and the element B, and also between a and the element A, but by making use of some proper device, such as a porous piece of earthenware,or in any other way it will be possi ble to hold together with the element A the coating of said mixture, leaving free the space required for the acidulated water. ThE! figures third and thir49isrepresent a battery of many cells, conriecte4 in tension . The figures 4th in elevation and 5th in cross·section both represent a support a covered with a coating b 0/ d paste o/minium, which is maintained adherent to the support by a porous felt a held by some clamps/. To prepare two elements we commence by establishing and seGuring a separation or partition, as will be. hereinafter explained; after this is done, they are set up and mounted in couples, with a liquid, such as water mixed with sulphuric acid, and by SUbmitting them afterwards to the action Of an electric current, we obtain on one side a coating of peroxidated lead, and on the other a coating of reduced lead. 'rhe pair thus formed is cQnverted Into a real deposit or recipient, with disposable electricity, and While the discharge is made, the reduced lead becomes oxidized, aI)d the peroxidated lead is reduced until the pair comes once more to an inert condition; that ready to receive a new charge of electrici ty. Summing up, therefore, the various details already explained, the object of this invention is constituted by the improved batteries or secQndary piles, which, baving a small bulk lind a very weight, allow the storage or accumulation of a considerable quantity of electric energy, and its principal features are t.he to wit: FIRsT.-The new process, devised by
the electrodes. and that in Fig. 1 being without sUGn media. . . The cell shown in Fig. 1 consists of two parts, A a, formed each of a thin plate of lead covered with a porous metallic coating,' C. and placed in a rectangular ressel, D, con taining, an elec-· trolytic liquid, F, .of, say, sulphuric acid and water. The norous metallic coating may be made of lead, or an oxide or salt of lead applied to the lead plates in any suitable way. Iu Fig. 2 a circular cell is shown, one electrode heing inclosed in the other. The rod B, of lead or carbon, is placed in I!o porous vessel, G, and is coated with the activll accumulating or absorbing material, A, SI!o1. sulphate of lllad mixed thoroughly wIth coarse coke, sawdust, or other ma, terial adapted to make the mass more porous. The other electrode consists of a piece of lead, A, with its inner face covered by a paste or mixture, Z, of' sulphate of lead and coke or equivalent material, which is held in plopi by a porous medium 'or partition, Q'. A suitable space is left between the partition G' and the vessel G for the electrolytic liquid. D is the containingvessel. . The battery shown in Figs. 3 and 3bi s has a number of elements connected in tension. The electrodeshflwn in Figs. 4 and 5 consists of a support a covered on both sides with a layer of lead oxide c, held in. place by sheets of felt b, fastened by rivets f of lead. In charging, the electricity acts to produce a reduced mass of porous lead on one electrode and a mass of peroxide of lead on the other. Wnen the battery is discharged the reduced lead becomes oxidized, and the peroxidized lelid is reduced until the equilibrium is restored. When again connected 'Yith a source of electricity the oxidized lead on one electrode is again reduced and the lead on the otlJer is again peroxidized, and thehattery becomes charged ready to give out a current when required. The oxides or salts of lead not soluble in the electrolytic liquid are deemed the most advantageous for covering the supports of the electrodes. The invention is not, however. limited to these, but inclurles generally substances capable of absorbing or storing electric energy in the manner described-for example. manganese or any salt the oxide of whose base is insoluble. What I claim is: 1. As an improvement in secondary batteries, an electrode consisting of a
BlJpport coated. on one or more ,faces willi an active layer of absorptive ,subB1iance-such as metal or metalliccoril· pound applied thereto in the described condition-so as to be or instantly be' come spongy, and thus capable of tecelving and discharging' electricity, as stated, in contradistinction to a metalHe plate itself by the diSintegrating action 9f electricity. substa.ntially as and for the purpose set forth. 2. In a secondary battery, an electrode having a plate or support coated with all active porous layer of metal or metallic compound. with inert material as crushed coke-mixed or incorporated therewith, substantially as described. 3. In combination with the plate or of an electrode and active spongy layer thereon, an openwork. perforate, or porous medium for holdillg said layer on the plate or support of the electrode, substantially as described. 4, In a se<;olldary battery, a series of comprising each a pair of electtbdes with an active spongy layer thereon. combiQed with non-porous partitlons'between adjacent cells, substantially as 'and for the purpose set forth. O. An electrode for secondarv batteriee, comprising a support, an active spongy layer of metalllc substance, and a hording w,edium through which the Il1ay pass. adapted to hold said layer on Sl;l:id suppdrt, said support. layer· and holding medium being all fastened together, so as to be capable of. transportation, substantially as described. 6, A battery' comprising a series of plates clamped together with strips of rlibber or like materialplaced between every two placed near the edges. so as to f6rm the bottom and ends of narrow troughs or cells with open tops. the sides of the troughs or cells being formed by the, plates, and the latter being clamped firmly, so that liquid-tight joints are formed, substantially as describecl, the projecting edges of the plates. When metallic, being protected by insulation, substantially as de· scribed.
the. for obtaining rapidly and econbmicallvelectrodes. able to retain and lteep, a hrge amou!:1t of ele.lJtric!,l energy: a process WhICh consIsts Il1 covering the ele.ctrode or support with a cost of metallic substance. porous9r spongY,formed and deposited with whatever thickness may be required, by galvlI,llicl'rocess. chemical preCipi. tation 0'1' SEcoND.--"The devices already .e1\:' plainedfor covering the'supports, made' of lead or any other propel"substance, with a thick!')!' thin coating(at will).of a porous or spongy substance. capable' ofkeepihg 'the electrical energy at the disposal of whosoever may. want to make use of it. ' new app}jcation of the bordets.paddinit or of India rubber; 'felt and other proper substances,'to maintain and pl:'eserve ad· herent to the. supporting ,plates. the cement· or layers of metallic matters, sucb Bslead, specially in a porous or spongy as forth; said metallic matter' may' besides be mixed or not with inert matter. ' FOURTIi.:;';';'The arrangements above stated' areapp1iC'able to the case in which the secondary piles are consti-' leadeD; sheets fnrming, accordll1g to Mr. Plante's method. FIFTIJ.-The arrangement <;If piles or comJ)ined elements' of parallel 'faces, forniing liquid tight compartIllllDts between eii,ch elelllent, thus c6n',$lituting piles, having as many couples may 1 he the number of elements'less'tllle. SIXTH.-TW .arranll:ements and the means of describlld herein and, represented in Figs. 4th; 5th and of annexe.d· devices and arrangemerttij WhIch allow the inventor tostort'l or accumulate electrical force,' ahd ihis in a small bulk to be transported to any place that may be convenient; he at liberty to em· ploy these devices a.nd arrangements either conjointly or severally.
The do not appear in the originals. Without pausing to examine the various features of the Spanish patent relating to the porous holding media and the arrangement of the electrodes in a series vf cells; which will be found in each instance to be similar to the United States patent, I proceed at once to consider whether or not what is now called the principal
ACCUMU;LATOR CO. V.JULIEN· ELECTRIC CO.
invent,ion is found in each. The use of a paste is not, it is true, recommended in the Spanish patent as the best way of applying the active material, but neither is it in the United States patent. It is suggested in both, but the language is rather more general in the latter than in the former. The United States patent says:
"This active material may be applied in fJarious ways, s6 as to obtain a layer of the desired depth, as in the form of paint, paste or cement, in the form of a deposit by galvanic action or chemical precipitation or otherwise. "
No .preference is here expressed for one way over another. The United States patent does not inform the public how the paint, paste or cement is prepared or applied. The use of sulphuric acid is not suggested as an ingredient, and the use of a spatula is not suggested for making the application. This is equally true of the Spanish patent But if a man of ordinary intelligence would know that a paint, paste or cement of active material is not to be applied by galvanic or chemical processes he would know equally well that a plaster of active material Ot a paste of minium is not t·) be so applied. The Spanish patent certainly suggests the mechanic· all;r applied paste coating, and could be limited to such a coating by disclaimer as well as the United States patent. If the words "galvanic chemical precipitation or" were omitted from the first claim of the Spanish patent, and corresponding words were stricken from the description, the patent would protect the paint, paste or cement method as effectively as the United States patent: The Spanish patent describes the supports as covered "by a df:.pcl'itin the form of a paste of some matter that may be minium;" and, again, "with a coating b of a paste of minium, which is maintained adherent to the support by a porous felt C held by some clamps." To the ordinary mind this language seems perfectly dear; it mf'flns just what similar language means in the United Sw:res patent. To give to it a different signification the words must he wrested flom their ordinary meaning, the improbable substituted for the pr(\bable,. and incongruity for common sense. One uf the criticisms made by the complainant's experts is that the language referred to is an appropriatepescription of coating by galvanic action or chemical precipitation. In order to meet this suggestion it is shown that a paste of minium, either by galvunoplastic action or by chemical precipitation, is, for all practical purposes, at least, out of the question; it can only be applied mechanically. The Spanish patent also speaks of covering the elements with "plaster coatings." The first claim is intended, inter alia, to secure the process of covering the electrode with a coat of active material by "adherence," and the third claim refers to "the cement or layers of metallic matters." If the language quoted from the Spanish patent does not convey to the mind as clear an idea of what Faure actually did as the phrase the form of paint, paste or cement," it is only because this expression did not occur to him or the solicitor who prepared the description of the Spanish patent. The phrase does not occur at all in the specification filed with the application for the United States patent or in the description
as they oliginaIly wentto the issnediVisicin.' It seems originated With the solicitor who the amended as the: dutcbme of aiforttlnate accident. In the Spani$h patent "paste" is used, "cement" is used, and, if "paint" is omitted; its place HI supplied by "plaster," which is an . word. Sir William Thomson, in describing the Faure invention, used this word in preference to all others. He' said: "The battery consisted of sheets of lead plastered over with a paste of moistened red-lead." .. If the Spanish patent had said that ,"the active material ,maybe applied in tM form of plaster, paste, or cement," it would probably be .admitted that it contained the invention of the United States patent. iBut it does say exactly this, though not in precisely the same order-the idea is there; the formation is the same. One skilled in the art could .learn the mechanical application in the form of a paste equally well from " both patents. The United States patent furnishes no information on the subject that is not found in equally clear language in the patent. It is true that the first claim of the former is for u product. and of the latter for a process, but the process the product, and the product can be made only by the process. It was the use of this process that was made by the expiration of the Spanish patent. Where a product is produced by a certain process, and only so, it cannot be said that he who first discovers the process, and by it produces the product, has made two inventions. "The product and the process constitute one discovery." Mosler Safe & Lock Co. v. Mosler,127 U. S. 354, 8 Sup. ct. Rep. 1148; Plummer v. Sargent, 120 U. S. 442, 7 Sup. Ct. Rep. 640. An electrode made by the Spanish process would infringe 'the United 'States claim; and an electrode made in Spain pursuant to the United States method would infringe the Spanish claim. The is. true if bot)! patents are limited to the paint, paste, cement or plaster method. The secQnd claim of the Spanish patent is not clear, but it was intended, apparently, to cover the described means of coating the electrodes with the porouE! or spongy mass. The fifth claim is designed to cover the same arrangement as the fourth claim of the United States patent. I am constrained to think, therefore, that the invention of the United States patent, even though construed as the complainant insists it should be, is covered by the Spanish patent. Few, if any, of the conditions are present here which differentiated the foreign from the domestic patent in Brush Electric Co.v. Electrical Accumulator Co., 47 Fed. Rep. 48, 53. On other hand, many of the reasons are present which induced the COUl'r. to hold that "Case 1" and "Case J" of Brush were for the innmtion. Brush Electric Co. v. Julien Electric Co., 41 Fed. Rep. 679, 683, 685. It 'is thought that the principal invention of United States patent is found iil the Spanish patent; that an electrode, made pursuant to the latter patent would infringe the former, and vice versa, and that the former could not have been granted in this country if the latter had previously been granted .
ACCUMULATOR CO. V. JUUEN
here. The subject-matter is essentially the same in the two patents. :An electrician, after reading one, woUld be as able to construct a mechanically coated Faure electrode as after· reading the other. It is argued that section 4887 is not applicable, for the reason that the United States patent was applied for before the Spanish patent was granted. This question is not an open one in this (·ourt. Gramme Electrical Co. v. Arnoux & Hochhausen Electric Co., 17 Fed. Rep. 838, 21 Blatchf. 450; Edison Electric Light Co. '-. United States Electric Lighting Co., 35 Fed. Rep. 134. Whenever the able and interesting argument in support of the complainant's contention is presented to a tribunal Which is at liberty to consider it, it will unquestionably receive the attention it desen·es. ' It argued for the complainant that the Spanish patent has a potential term of 20 years. The patent was granted June 27, 1881, for a term of 10 years. It expired June 27, 1891. On August 31, 1891, it was declared extinct by the proper authority. On March 20, 1883, two years after the patent was issued, Spain and France entered into a convention by which, in certain circumstances, the terms of patents might b£" extended. To this convention the United States was a party. The director general of the Spanish department of agriculture, industry and commerce, which department has charge of all subjects relating to patents, decided that the provisions of this convention were retroactive. It is probable, therefore, that if application had been seasonably made the patent would have been extended till June 1901. But the application was not mad£' until March 26, 1892, long after the patent had lapsed, and after the expiration of the time within which an application could be made for an extension. On the 30th of March, 1892, the application was denied. It is thought that this subsequent international convention, even if it had the force of a statute, and it had not, cannot be considered as prolonging the term of the United States patent. It is not necessary to consider what might have been the result if the Spanish patent had been extended. It was granted for 10 years; it expired in 10 years, and no effort was made to rehabilitate it until long after it had lapsed. This is not the case of a patent granted fOl' a long term, but expiring because of the failure to observe some condition subsequent. Here the life of the patent was definitely for 10 years,' and it never had any other term. In Consolidated Roller-Mill Co. v. Walker, 43 Fed. Rep. 575, 580, the foreign law providing for a potential term was in force when the forpign and domestic patents were granted, and it was held that the patents were limited by the optional, and not the designated, term. This is not such a case. Bate Refrigerating Co. v. Gillett, 31 Fed. Rep. 809; Bate Refrigerating Co. v. Hammond Co., 129 U. S. 151, 9 Sup. Ct. Rep. 225; Opinion of Attorney General Miller, (April 5, 1889,) 47 O. G. 398; Huber v. Manufacturing Co., 63 O. G. 311, 13 Sup. Ct. Rep. 603, 38 Fed. Rep. 830.
For the reasonl!! stated in Brosh Electric Co. 'It. Electrical Xccwnulator Co., 47 Fed. Rep. 48, 55, this decision has been reached with reillctance. Those;;r,easonsdo not, it is true, apply with the same force to an invention made abroad by a foreigner as to an invention made by one of our own citizens; but the statute in its practical operation has failed to remedy the supposed evil at which it was aimed, and the duty of overthrowing a valuable patent units provisions is one that the court would naturally wish to avoid. But the question, do the patents cover the same invention? is fairly presented, and its decision cannot be avoided. After giving the complainant the benefit of every reasonable doubt, the court ,is convinced that the question must be answered in the affirmative. The longer the record is studied, the more settled becomes the conviction that the invention which Faure patented in Spain and in the United States was the invention which he made and patented in France, that, so far as the inventor was concerned, the language was substantially identical and that the changelil in phraseology made by the translators and patent-office officials; of which changes the inventor was ignorant, did not and could not operate to change the invention. It follows that the defendants are entitled to a decree dissolving the injunction issued April 12, 1889.
EDISON ELECTRIO LIGHT CO. et aI. v. ELECTRIC MANUF'G CO. et aI. (Circuit Court, E. D. Wisconsin. July 20, 1893.)
PATENTS li'OR INVENTIONS-PRELIMINARY INJUNCTION-ParOR ADJUDICATIONS ....PROOF OF NEW D:mFENSE.
Where a patent has been sustaIned after protracted and expensive litigation, the right of the patent owner to a preliminary injunction against a new infringer can only be q.efeated .by a new defense, which is sustained by such convincing proof as will raise a presumption that it would have defeated the patent, if produced at the original trial. This rule requires that every reasonable doubt shall be resolved against the new defense. Edison Electric Light Co. v. Beacon Vacuum Pump & Electrical Co., 54 Fed. Rep. 678, followed, and Same v. Columbia Incandescent Lamp Co., 56 Fed. Rep.. 496, disapproved.
BAME-INCANDESCENT ELECTRIC LAMPS.
On a motion for a preliminary injunction against the infringement of letters,Natent No. 223,898, issued January 27, 1880, to Thomas A. Edison, for unImproved electric lamp, the proofs of an alleged anticipation by Henry Goebel in 1854, and SUbsequently, are insufficient to overcome the effect of the adjudications sustaining the patent, and the injunction should therefore issue. Edison Electric Light Co. v. Columbia Incandescent Lamp Co., 56 Fed. Rep. 496, disapproved.
In Equity. Bill foc the infringement of a patent. On motion for a preliminary injunction. Granted. R. N. Dyer, C. E. Mitchell, F.P. Fish, W. G. Beale, and H. G. Underwood, for complainants. W. C. Witter, W. H. Kenyon, A. P. Smith, and W. H. Webster, for defendants.