EDISON ELECTRIC LIGHT CO. V. BOSTON INCANDESCENT LAMP CO.
upward from the reservoir to the atomizing jet by suction, and that an apparatus in which the oil is fed from the reservoir to the atomizing jet by gravity is not within the patent, and therefore cannot infringe it. In an apparatus where the oil is fed by gravity, the oil pipe must, of necessity, contain some form of valve or regulator, in order to stop the flow of oil when the burner is not in operation. The defendant's apparatus has a stop valve in the oil pipe which opens when the steam reaches a certain pressure, and which closes when that pressure is reduced to a certain point; and the of the stop valve permits the oil to flow to the atomizing jet, and thp closing of the valve prevents its further flow. In this respect It differs in construction and mode of operation from the Shipman device. It may be true, as contended by the complainant, that, after the oil has reached the atomizing jet, its discharge, when the apparatus is in operation, is regulated, in part at least, by the steam pressure in the steam pipe, and that to this extent it resembles the Shipman burner, and differs from the Dickerson burner. Admitting this to be so, I do not think this circumstance brings the defendant's burner within any fair or legitimate construction of the Shipman patent. Bill dismissed.
EDISON ELECTRIC LIGHT CO. et al. v. BOSTON INCANDESCENT LAMP CO. et al.
(Circuit Court, D. Massachusetts. No. 3,246.
June 11, 1894.)
PATENTS-LIMITATION OF CLAIM -INFRINGEMENT LAMPS. .
In the Edison incandescent lamp patent, No. 223,898, claim 2, for the eombinatlon of carbon filaments with a glass receiver, from which the air is exhausted, and conductors passing through the glass, is not to be limited to the conductors of platinum wire pointed out in the specification, and employed in practice, for the patent covers a pioneer invention, and the elements of the combination other than the carbon filament are subordinate; and therefore the claim is infringed by a lamp, constructed under the Pollard patent of 1892, containing all the elements of the combination, but using conductors of powdered silver, although powdered silver was not a known substitute for platinum in the combination at the date of the Edison patent.
This was a suit by the Edison Electric Light Company and others against the Boston Incandescent Lamp Company and others. Com· plainants moved for a preliminary injunction. Fish, Richardson & Storrow, for complainants. John Lowell and John Lowell, Jr., for defendants. COLT, Circuit Judge. The second claim of the Edison incandescent lamp patent (No. 223,898) is for "the combination of carbon
. . .. l1'JllDlilRAL REPORTER,
1llam.ents with 8' 'entirely of glass and conductorlt passing through the gluss,and from which receiver the air is exhausted,for the purposes set. forth." . The defendants' lamp, constructed after the Pollard patent, of November,!, 1892,containsall the elements enumerated in this claim, 'namely, 8: carbon filament, all-glass receiver,from which the air is exhausted, and conductors. passing through the glass. The only difference between :the two lamps is that the defendants use a film of powdered silver for the conductors .passing through the glass, in place of illatinum wire, which Edi$On ,points out in the specification ;of his patent as the material to be :employed, and which is always found in tbe Edison lamp of commerce. In other respects the lamps While Edison uses platinum wire, he does not limit himself to this form of conductor in his claim. The 11.lDg)lage of, the claim is "conductors passing through the glass," apd. therefore, on its face,' the claim covers all kinds of material capable of carrying th;e electric current. If the claim had been limited to conductors of platinum wire, as the filament is limited to carbon, the cRee mighlbedifferent. (The invention of Edison resides in the carbon filament; the other 'f:l.1ew-ents, of the qom1;>ination, were old "and subordinate, and represent, so to speak, only the environment of the, filament. For this· reason, I do not think the court should seek to the plain meaning of the language of the claim. And there is another reason for giving the claim a broad construction. Edison made an impqctant ,he the incandescent electrIC lamp; the IS a pIoneer 10, the sense of the patent law; it may be said that his inven'tion created the art of incandescent electric lighting.: ,:Wher.e aivaluable invention has been made, the court will uphold that which was really invented, and wbi,ch comes within any fair interpretation of the patentee's claim. Merrill v. j"eomans, 94 U. S. 568,573. , The arguIIlent of the defendants is that this claim of the Edison must be limited to useof platinuIp. wire as a conductor, or it's ,known equivalent, and that powdered slIver was not a known e<}nivalEmt at the date of th,e Edison patent. Looking generally at the'state of the electrical art at the date of the' Edison patent, and platinum wire and powdered silver simply as elements, specific combination or invention, it cannot be said thatQIte.was not a known equivalent olthe other, because powdered metalsjincluding silver,havebeen recognized since 1860 as conductors of electricity. In asserting that powdered silver was not a .wire, the !!lust that known substItute In thecorpblnahonor Invention of the Edison 'paterit, Or' in the art of incandescent. electrio lighting, and' I think the evidence proves this tone' true; but, in dealing with an invention which is broadly new/ I' am not prepared to accept the proposition that, in olider,to constitute· infringement, an equivalent in a patented combination must always have been known at 'the date of' the patentjior, must have been such as would occur toa Skilled mechamie exercising-only iordinary mechanical skilL
EDISON ELECTRIC LIGHT CO. '/J. BOSTON INCANDESCENT LAMP CO.
While the language of the supreme court illl Rees v. Gould, 15 Wall. 187, and other cases, seems to support the defendants' contention on this question, the later decisions by that court are not reconcilable with the broad proposition that in all cases the substitution of an equivalent will avoid infringement, provided it was not known at the date of the patent, usi!lg the word "known" in its <ordinary Morley Sewing Mach. Co. v. Lancaster, 129 U. S. 263, 9 Sup. Ct. 299; Clough v. Barker, 106 U. S. 166, 1 Sup. Ct. 188; Machine Co. v. Murphy, 97 U. S. 120. In the Morley Case, Mr. Justice Blatchford, speaking for the court, says:
"A difference in the particular devices used to accomplish a particular result in such a machine would always enable a defendant to escape the charge of infringement, provided such devices were new with the defendant in such a machine, because, as no machine for accomplishing the result existed before that of the plaintiff, the particular devices alleged to avoid infringement could not have existed or been known in such a machine prior to the plaintiff's invention."
In that case, the patent was for a machine for automatically sewing shank buttons to a fabric, and it was the first machine to accomplish this result. In the defendant's machine, the feeding and sewing mechanisms were new, and had been patented, yet the court held that it infringed the Morley patent. The feeding and seWing ,devices of the Lancaster. machine, in the art of automatically sewing shank buttons to a fabric, were as unknown at the date of the Morley patent as a conductor made of powdered silver, at the date the Edison patent, in the art of incandescent electric lighting. In dealing with a pioneer invention which creates a new art, it hardly seems logical or reasonable to say that, because" in the progress of such art some new substance or device has been discovered, which can act as a substitute for one of the elements of the patented invention, anyone can appropriate the invention. by the employment of such substitute. And, further, if equivalency' signifies equivalency in the particular combination or it is -difficult to point out in this class of cases what known equivalents existed at the date of the patent, for the reason that the combination ,of elements in which the invention is embodied was first made known ,by the patentee. The doctrine of equivalents, as applied to primary inventions, rests upon a more satisfactory basis by the elimination 'of the qualification of age or time, and by holding those things to be equivalents which perform the same function in substantially the same way. The fundamental question is whether the alleged in· fringer makes use of the essence of the patented invention; not whether he has adopted a known equivalent, or made a patentable' improvement on the invention. The motion for preliminary injunction is granted.
EASTMAN CO. v. BLAIR CAMERA CO. (Circuit Court, D. Massachusetts. June I, 1894.) No. 2.883.
PATEN'!'Il-ANTICIPATION-PHOTOGRAPHIC FII.M HOLDERS.
The HoUston patent, No. 248,179, for an improvement in photographic apparatus, consisting in connecting with one of the rollers connected with the sensitized slip within the camera a pointer, placed ontSJide the camera, to indicate the revolutions of the roller and the length of the negatives, and attaching to the same roller a pin to perforate the edge of the lltrip at the spaces between the negatives, so that the division lines could he detected in a dark room, was not anticipated by previous cylindrical cloth-measuring machines, having no such device for marking lengths. The Walker and Eastman patent, No. 317,049, for a device to keep the sensitized strip in a photographic camera in proper tension, consisting in the insertion of a spring in the receiving reel to take up the slack of the film, or alwayiS drll,w it against the resistance of the spool, was not anticipated by such prior devices as the map rack descl'ibed in the Mann patent of 1876. In the Walker and Eastman patent, 1'10. 317,049, for an improvement in photographic apparatus, claim 3 described the device as "acting to maintain the film in a tense condition during exposure." Held, that this meant, not that the tense condition was maintained only during the instant of exposure, but that the film should always be so acted upon that when exposure should take place it would he found in a tense condition.
SAME-CONSTRUCTION OF CLAIM.
This was a suit by the Eastman Company against the Blair Camera Company for infringement of a patent. M. B. Philipp, for complainant. John L. S. Roberts, for defendant. COLT, Circuit Judge. The two patents in controversy in this case are for improvements in photog;J.'aphic apparatus. The first patent was granted to David H. Houston, October 11, 1881, and is No. 248,179; the second patent was granted to Walker and Eastman, May 5, 1885, and is No. 317,049. In the old photographic camera, the plate upon which the image ot object was taken was made of glass covered on one side with a thin film of sensitive material. The film consisted of collodion, sensitized in a bath of nitrate of silver, and exposed in the camera while wet. This was known as the, wet process. This form of apparatus was cumbersome and difficult to operate in the field. In 1880, Mr. Eastman, one of the inventors of the Walker and Eastman patent, commenced the manufacture of dry plates. These plates were coated with a film composed of an emulsion of gelatine and bromide of silver, and then dried, but they were open to the objections of all glass plates, namely, they were heavy and liable to break. It was sought to overcome these objections to the use of glass plates by the substitution of strips of sensitized paper. supported on rollers.