U. S\' '158, 5H!!Jup. Ot. '513; YagOW8JD i v; Packing 00., 141 U. S. 332, 12 Sup. ,et. 71; The Barbed·Wire Patent, 143U.'S.275;12 Sup. Ot.
443, 460. .
Decree tor complainants.
DAVIS ELECTnrCAL WORKS et al. v. EDISON ELEOTRIO LIGHT 00. et.'aI. (Oircuit Oourt ot Appeals, First OJrcult. February 9, 1894.) No.
PATBKTs-hnniGJIlMENT-REPAm AND RECONSTRUCTION-ELECTRIC LAMPS.
It reconstruction, a.ndnot merely to make a hole in the bulb of an Edison incandescent electric lamp, (pa.tent No. 223,898,) in which the carbon filament has been destroyed by USe, and put in a new filament having its ends Inserted in piatInum sleeves; elOISe the hole by fusing a piece of glaB..,over it, and' then e:thaustthe air; 58 Fed. 878, affirmed.
Appeal from: the Circuit Oourt trict of MassachUSetts. . ,
the UnitedStatee for the Dis-
This wl1sa bill in equity'brought by the ]Ddison,Electric Light Com· panY and the Edison General Electric Company to enjQin the Davis Elec· trical Worfts,Leonard L. Davis, and Oharles F. Wlttemore from infringing the Edison incandescent elecj:riclamp patent No. 223,898, issued January 27, 1880. A,prellminary injooction was bel0)'V' ,(58 It'ed. 878,) and defendants appeal to this coUrt, under the 'seventh section. of the judiciary act of Mtirch 3, 1891. The matter complalned of was 'that defendants were engaged in replacing the carbon filament of Edison lamps, after the original filament bad been destroyed by use. This, complainants alleged, was a reconstruction of the lamp, amounting to infringement of the patent;. whlle defendants claimed that it was mere repairing, which they were entitled to perform. The process, as described by the court below, WIU!I 88 follows: "The defendants; 'first break otr the tip of' the glass bulb 01. the lamp, and ream out a hole' about one-half inch in' diameter. The broken filament is then removed. The new filament, having its ends cemented into platinum sleeves, is then inserted into tbe glass chamber, the sleeves being pushed down over the two platinUm leading·in a.nd compressed upon them. A tube of glass, made into the shape ofa tUnnel, is heated, and placed over the hole in the lamp chaxn,ber. This tube is fused into the open end of the bulb, which! brings it into the condition of the or4inary lamp bulb just prior to exbaustion. The air is then exhausted, and the bulb sealed."
John L. S.- Roberts and 'John Lowell, for appellants. F. P. Fish, Richard N. Dyer, and W. K. Richardson, for appellees. Before PUTNAM, Circuit Judj:te, and NELSON and WEBB, District Judges. PUTNAM, Circuit Judge. In this case the circuit court, on the 13th' day of Deeember, 1893, entered an order for a preliminary injunction, and 'tor a writ of injunction to issue accordingly. From that order the defendants below, in accordance with ·the seventh section of the act establishing this oourt,took an appeal, which came on to be heard on the 18th day of January, 1894. It does not appear that a supersedeas was obtainoed or asked Cor. A preliri.linaryquestion was made' at, the bar touching 'the nature
DAVIS ELECTRICAL WORJCS
EDISON ELECTRIC LIGHT
of the adjudication to be made by this court on an appeal of this character. The appellees have brought the attention of the court to the ruling of the circuit court of appeals in the sixth circuit, found In Blount v. Societe Anonyme du Filtre Chamberland Systeme Pasteur, 3 O. O. A. 455, 53 Fed. 98, the pith of which is in the closing words of a·sentence on page 458, 3 O. O. A., and page 102, 53 Fed.:
"This court, under the present appeal, Is not called upon to make any ilnal decision as to the validity of the patent or the Infringement thereof, Dor is the consideration of those questions either necessary or proper, further than to ascertain whether the order complained of was an improvident .exercise of a legal discretion on the part of the circuit court."
It is claimed that the same rule has been reached in the cecond eircuit in Ameriean Paper Pail & Box Co. v. National Folding Box & Paper Co., 2 O. 0; A. 165, 51 Fed. 229; in the third circuit in Consolidated Electric Storage Co. v. Accumulator Co., 5 O. C. A. 202, 55 Fed. 485; and in the fifth circuit in Hart v. Buckner, 5 C. O. A. 1, 54 Fed. 925, and in Workingmen's Amalgamated Council of New Orleans v. U. S., 6 O. O. A. 258, 57 Fed. 85. The appellees also refer to. Richmond v. 2 C. O. A. 596, 52 Fed. 10, and especially to a proposition found on page 24, and to the alleged practice in England and elsewhere, as stated in Daniell, Ch. Pro (4th Ed.) p. 1462, and in High, Inj. (3d Ed.) § 1696. We do not find it necessary to comment on these citations, except to suggest that thJ.t from the second circuit, especially in view of Curti$ V. Wheel Co., 58 Fed. 784,1 may be found to lean against the appellees. If their position is correct, the result is that parties aggrieved by orders of circuit courts, under circumstances like these at bar, are disenabled from having "the case" tried on appeal, and are cut down to a question whether or not the court below has acted within the limits of its discretion. This court has regarded the purposes of the section in question as highly remedial, and has not been disposed to clip its wings in any particular; but whether it will limit the exercise of its judicial powers as by the appellees need not now be determined, because, in either view of the question, we should reach the same result. 'We are satisfied that the order of the circuit court was within the limits of its judicial discretion, and also, on examining the case de novo, that that dis.cretion was correctly exercised. The caae was heard in the court below on affidavits, and before any answer was filed. It is conceded that the second claim of the patent in controversy, which is the only claim of which we are requested to take cognizance, is valid, at least for the purposes of this hearing; and, for the same purposes, it is proper to accept the conclusions of the United States circuit court of appeals for the second circuit, which will hereafter be cited, as to the construction of the claim and the advance from the prior state of the art which it represents. Therefore our conclusions will be without prejudice to any question touching the validity of the patent or its construction, or the advance from the prior state of the art which it repre'10. O. A. 49&
nDB1U.L·UPOBTEB, vol. ·60.
senti. '. The only matter' really in question before us is that of infringement; and evenwuching this, inasmuch as the case'is now hea:l'd.withoutanswer,and on affidavits, whatever conclusion we now reach .would not necessarily preclude a different one, if the case' should hereafter come to uson an appeal from a decree ,entered after a heariJngeaD bill, answer, and proofs. The claim in CODtroversy is . in the following language:
"2. The combiIiation of eat-bon :lUaments with a receiver made entirely of glllsS"juld conductors passing through the glass, and from which receiver the air 18 eXhausted, for the purposes set forth."
While . there may be some matters of detail in construction described in the specifications which are novel, but as to which the court is. not now called upon to deterriUne whether, if claimed, they would hlivebeen patentable, it appears, on the case presented, thatt of the elements in the set out in claim two, the carbon filament, in use in a vacUmtt, ,represents the entire advance from the state· of the art, so far as this claim is concerned. Such appears to have been the substantial finding in the opinion of the United States circuit court of avpeals in the second circuit in Edison Electric Light Co. v. United States Electric Lighting Co., 3 C. C. A. 83, 52 Fed. 300. The judgment following this opinion was filed in the court below on the hearing of the motion for the injunction appealed from, opinion was probably laid before that court, though the reCOl"ddoes not show it. It is, however, submitted for our consideratiolr without ol>jection, and is certainly to be considered on a of an ad interim injunction. It contains the following:
invention was practically made when he ascertained the ther&> tofore lrlIkti9wn 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 1Uamentary carbon burner In a nearly perfect vacuum." . ..
Asstfong an as any of the rule from which fiows the right to repair a patented device which has been put on the market is found in Chaffee v. Belting Co., 22 How. 217, 223, as follows:
"When the patented machine rightfully passes to the hands of the purchaser from the patentee, or from any other person by him authorized to it, the machine is no longer within the limits of the monopoly. According to the decision of this court in the cases before mentioned, it then. passes outside of the monopoly, and is no longer under the peculiar protection granted to patented rights. By a valid sale and purchase, the patented machine becomes the private Individual property of the purchaser, and is no longer protected by the laws of the United States, but by the laws of the state in which it is situated. Hence it is obvious that, 1:f a person legally acquires a title to that which is the subject of letters patent. he may. continue to use it untU it is worn out, or he may repair it or improve upon it, as he pleases, in the same manner as if dealing with property of any other kind."
This,an4 other expressions of like character in the decisions of the supreme court, as in Adams v. Burke, 17 Wall. 453, and Hobbie v. 149 U. 8.355, 13 Sup. Ct. 879, are, however, of a general nature, and were made with reference to the interests of the
DAVIS ELECTRICAL WORKS fl. EDISON ELECTRIC LIGHT CO.
purchaser of a patented device as against an extension of the patent, or with reference to territorial rights. Out of this rule, . however, flows the right of repair, on which the appellants rely; yet in no case has the supreme court held that this right is absolute and universal, or that it may not be limited by express or implied restrictions entering into the transaction of the sale of the patented machine or device. Expressions the other way may be found in Wilson v. Simpson, 9 How. 109, 125; Adams v. Burke, 17 'Vall 453, 457; and Hobbie v. Jennison, 149 U. S. 355, 363, 364, 13 Sup. Ct. 879. We prefer, however, not to rest the case on any implied reservation arising from ,the nature of the device now in question, although leaning to an agreement with the circuit court in that particular, as we are clear that the work done by defendants is not reparation, but reconstruction. In considering this proposition, it must be conceded that we can draw no direct assistance from Wilson v. Simpson, ubi supra, where merely replacing the cutters in a large patented combination, constituting a planing machine, was all that was done. The only other decision of the supreme court brought to our attention which bears directly on what constitutes reparation is Cotton-Tie Co. v. Simmons, 106 U. S. 89, 1 Sup. Ct. 52, which, while the facts in no two cases can be strictly analogous in all respects, is very persuasive in favor of the complainants below. In that case, the third claim of the Brodie patent, the combination which made up the cotton tie, included a band and a link or buckle. The court said, (page 93, 106 U. S., and page 52, 1 Sup. Ct.:)
"The band in a condition fit tor use with the buckle Is an element tn the third claim of the Brodie reissue."
And the court continued on page 94, 106 U. S., and page 52, 1 Sup.Ct.:
"The band was voluntarily severed by the consumer at the cotton mlll, because the tie had performed Its function of confining the bale of cotton In its transit from the plantation, or the press, to the mill. Its capacity for use as.a tie was voluntarily destroyed.. As It left the bale It could not be used again as a tie. As a tie the defendants reconstructed It, although they used the old buckle without repairing that. The case Is not like putting new cutters into a planlug machine in place of those worn out by use, as in Wilson v. Simpson, 9 How. 108."
The court held that Brodie's third claim was thus infringed. To paraphrase the above citation, it might be said that the capacity of the filament in the case at bar for use as such was voluntarily destroyed, not, to be sure, by breakage, but by continuous voluntary US&, and that, after it was taken out by the respond. ents, it could not be used again as a filament. This, however, standing alone, may be misleading. Therefore, it is necessari to look further. We need to be careful not to be deceived by the form of things. In the planing machine every part might be renewed in succession, or every joint might be temporarily taken apart, and every element laid in disorder, without necessarily involving reconstruction. On the other hand, in certain stages of use the essence of .. device.
though In appearance only a small portion of it, may be lost, and its renewal amount to reconstruction. Whether the result is this or depends less on the determination. of rules of law, or ot succeEjiiye propositions in a logical series, than on the direct appreof questions of fact by the sound mind, trained in the com· of mankind, and guided by the evidence laid before mon it. 'I'Heconclusions which for the major part satisfy that appreiIllllst be accepted, although they may be very far from inIn the absence of a crucial test to which all must yield, tlleoIllY aid comes from various minor or incidental considerations, and their combined effect. '.WelU'e dealing in this case, not with a lamp, nor "even with a electric lamp, but with the particular so-called electric lamp covered by the claim in question here. In determining be· repa,ration and reconstruction, we must deal with the essence of that only. It may be that for many patented com· of ,each element is, for some purposes, of equal value, as the appellants; but this rule is limited mainly to the to be put by the court on the patent, when ,that is in doubt. It cannot contrQl the apprehension of out the substance of things, with courts, OJ:' ,judes, when reference to the particular determination whether what is in form reconstruction ,is in truth reparation" or vice versa. The latter question i$,as already Sl;Lid, one largely of fact, appropriate in suits at law for ajury, under proper instructions from the court; while the rule that, prima facie, all elements ofa particular combination are of equal value, or at least eSf'lential, is presumably one of law, arising sometimes on the face of the patent, and at other times to be determined by the court in view of whatever extrinsic facts may be The proposition of the appellants that, if the injunction stands, it gives the complainants the same benefit as though the pat· ent contained a claim for the filament alone, serves properly to cantion us, but cannot operate as a definitive limitation on our conclusions. For' the latter purpose the argument goes too far. In the Telephone Cases, 126 U. S., the court said (page 533, and 8 Sup. Ct. 778) that other inventors might compete with Bell for the ways of giving effect to his discovery, yet in the state of the art as it was then the conclusions of the supreme court gave Bell a practical mo· nopoly of. that discovery. So, ordinarily, if the new element in a combination, is associated in the claim with additional elements which, in ·the 'state of the art, there is no practical method of replacing by others, the patentee obtains the same practical advan· tages &J!I though this new element had been claimed alone,-at least unt\l the art . mllkes new discoveries. Neither in such instances, nor in the case at bar, is the course of the law to be turned aside because the practical result may be to give a patentee for the time being mQre than the patent office contemplated, nor is the patentee to be deprived of his just rights because under some circumstances he gets incidental advantages beyond what he expressly bargained for. We .do n,ot'interms give the patentee the benefit of a claim for the ftlament alone, nor 'Prohibit its use in BOrne other combination thaD
DAVIS ELECTRICAL WORKS 17. EDISON ELECTRIC
that set out in the· second claim,. if some ingenious way of making such other combination is ever discovered. The appellants do not bring themselves within the expression in Wilson v. Simpson, 9 How. 125, renewed in substance in Cotton-Tie Co. v. Simmons, 106 U. S. 94, and page 52, 1 Sup. Ct., to the effect that temporary parts may be replaced "in accordance with the intention of the vendor." While the supreme court has not expressly given this as a limitation, it may be made effectual as a permit where the facts authorize it. In this case the plan of construction, which permits no severance of the parts by any ordinary method of detachment, the sale price of the entire device, about 3.0 cents, the comparatively large cost of the so-called reparation, the special skill reo quired to make it, the fact proven that the device is made so cheaply that it can be thrown away without substantial loss when the filament is worn out, and the experience that, though the patent had run about 13 years, and some 13,000,000 lamps had been made before respondents below commenced the so-called reparations, destruction of the lamp after the filament was worn out had been the rule, distinguish this device in this respect from those which preceded it, exclude the suggestion of either express or implied assent by the patentees to a renewal of the filament, and compel the appellants to meet directly the issue of reparation as against reconstruction. In the view of the court, the attempted analogy by which the appellants seek to maintain their position shows the futility of their efforts to do so, and guides the mind to the proper solution of this case. Their affidavits contain the following expressions:
"It seems to me that the replacing of a carbon filament in a burned-out electric lamp does not in any manner change the lamp itself, or its constituent parts, any more than replacing the wick in a kerosene lamp; and the opening of the glass bUlb and exhausting the air, and resealing it, in order to replace the filament, does not change the construction of the lamp any more, nor to any greater extent, than the removal of the glass chimney from a kerosene lamp, in order to replace a burned-out wick, and then to replace the chimney where it was before." " "The only thing added to the extinguished lamp is a carbon filament, the same as replacing the old burnt-out wick of a lamp by a new one."
They also use the following:
"In the above-described operation of repairing said incandescent electric lamp, every part thereof which existed in it when it was a new lamp, excepting the filament thereof, exists in the repaired lamp, and It is still the same old lamp, excepting the filament."
The suggestion that the worn-out filament in the Edison device stands for the old burnt-out wick of an ordinary lamp is not sustainable. So far from the filament being the mere wick, it is itself essentially the lamp; that is, the electric lamp of Edison. Everything else, the globe and the conductors, are, for this case, only the chimney, the stand, and the opening for inserting the oil or other fluid, found in the ordinary domestic lamp. To make our proposition clear, we refer to the fact that the witnesses use with perfect naturalness the expression "arc lamp," although this has no receiver of glass, no vacuum, and no other detailed incidents of the" device in
controversy;. nor anything which stands for them, ID tile first claim of the patent in suit an electric lamp is described,with entire correctness, as "consisting ofa filament of high resistance, made as described, and secured to metallic wires as set The analogy fails in. essential particulars, and, in falling, suggests a distinction, as a1readysaid,which is fatal. to the 'Case the analogy was intended to support. In essence,.' ·the .filament; .duly charged, is the light-giving thing. It can give light without the glass re'Ceiver or the ,vacuum, though it does it better and longer'with them. The glass receiver was old and common; the vacuum and the knowledge ,of its uses were old, though carried forward by Edison'sper;fectedmechanical details; the conductors. and all the other elements, named and not named, are subject to the same observation, except only the filament and its use in the relations described. If offered without a filament, the device would be in essence only a manufacturer's blank; from which an electric lamp could be set up, but not the lamp itself. When deprived of its filament, it becomes again a :Q;lanufacturer'sblank. In this respect the device . is. essentially unlike Woodworth's planing machine, which'· would commonly and properly be, designated as snch even without the cutters, althou.gh,as the su.preme court said, they essential and distinct constituent of the principle or combinatioJ;l of the invention." .We are speaking now, as said before, nototrwhat is the substance in view of the patent law in preparing or.construing a claim, but· in view of things as things, and of a practical understanding of reparation and reconstruction. or implied consent that the filament might be There was nQ and to ,renew it, with or without that consent, was as a matter of fact and, in. a practical sense, reconstruction. We therefore adopt the language of the court below as follows:
a new lamp,"
bulb can Qe opened and a new filament inserted without making essentially
"From the very nature of the Edison invention. I do not .
see' how the glass
The business under the patent has been long established, manufacturing about 1,000,000 lamps annually.' The fundamental basis of jurisdiction in equity in relation to patent rights and trade-marks is the necessity of protecting established enterprises from the great uncertainty caused by infringements, and by the difficulty of measurip.g the dire()t .and indirect losses if infringements continue. The business of the defendants. below was recently commenced under such circumstances that they must, or ought to, have understood thatthey would be subjected to the hazards of this litigation. The essential facts,. and the validity and construction of the patent in question, are not now in dispute. The inferences to be drawn from those facts' appear to the court to be clear. The case, therefore, seems particularly appropriate for an ad interim injunction. Whatever order may be made ou'an appeal of this character ought not ordinarily to exclude the court below from its control over an ad interim injunction,and must not ordinarily be construed to have that effect. In the present case, the injunction order does not seem to haye .been supersededLbythe appeal With this explanation,
WOODWARD '/I·. BOSTON LASTING MACH. CO.
we adopt for the present the form of order whlch we find in other circuits. Order appealed from affirmed, with costl!l. WEBB, District Judge, concurs in the result.
WOODWARD et aI. T. BOSTON LASTING MACH. Co.' (Circuit Court of Appeals, First Circuit. No.61. March 5. 1894.)
PATENTs-INFRmGEMENT-ESTOPPEL OF ASSIGNOR.
The assignment of. a patent by the patentee estops him, when eued for infringement thereof by the assignee, from denying patentable invention. The fact that certain persons construct, use experimentally, and offer for sale, machines designed by an inventor who has previously assigned a patent for machines to do the same work, raises a presumption of priVity between him and them, sufficient to render applicable to them the same estoppel which prevents him from denying patentable invention in the assigned patent. Differences in constructional details, constituting a possible Improvement on the invention of the patent, do not avoid infringement, when all the essential elements of the best form of that Invention are retained. The Woodward patent, No. 248,544, for a lasting and tacking machine. 53 Fed. 481, afllrmed.
6eld to have been intringed by defendants.
Appeal from the Circuit Court of the United States for the District of Massachusetts. This was a suit in equity by the Boston Lasting Machine Company against Erastus Woodward, James Barrett, and Thomas Barrett, for infringement of the Woodward patent, No. 248,544, for a lasting and tacking machine. The court below adjudged infringement of the second, third, and fourth claims of the patent, but declared the first and fifth claims to be void. 53 Fed. 48L From this decree the defendants appeal George O. G. Coale, for appellants. James E. Maynadier, for appellee. Before COLT and PUTNAM, Circuit Judges, and NELSON, District Judge. COLT, Circuit Judge. This suit was brought against Erastus Woodward and others for infringement of a patent (No. 248,544) granted to said Woodward October 18, 1881, and duly assigned to the plaintiff, the Boston Lasting Machine Company The invention is for a tacking machine which will drive only one nail, and then stop, and which is actuated by the pressure of a jack. The machine covers the combination of three elements: (1) Fastening-driving mechanism; (2) start and stop motions, whereby the machine is automatically started and stopped after one tack is driven; and (3) a jack for presenting the work to be operated upon to the nozzle