BRUSH
ELECTRIc
co. V. JULIEN ELECTRIC
..4t 0,9 "
BRUSH :ELECTRIC
CO.
CO. d at.
(Circuit Court, S.D. N6'W York; March 18, 1890.)
1.
PATENTS FOR INVENTIONS-IDENTITy-BECONDARY BATTERIES.
Letters patent No, 38'7,298 .andNo. 387,299, bot/l 2,1886, to Charles F. Brush, for improvements in secondary are for tile same invention, each consistmg of a plate or'support wibh amechanically applied coating, the only difference between the specifications being that in the one case the coating Is composed of "active lUaterial," and in the ,other of "absorotive substance, adapted' to be transformed into an active coating" upon immersion in the electrolyte. , A aeooridary battery, !'8 referred to in said patents, is a blittery which has no original power of developing a current ot electricity, and becomes active only when a current. elsewhere generated, is sent through Jt. Following muZator' Co. v. Julien Electric Co., 38 Fed. Rep. 121.
.. SAME· .
a;SA:ltIE---A:NTlcIPATION.
Bald, patents were not anticipated .lly, letters. patent .No. 58,668, issued April S, 1886, to George C. Percivalji for an improvement in secondary batteries formed by, electrodes consisting of CEl sIDled with coarse conducting powder, and divided by a poroUll partition. ' . . '
.. SA1lQi:-AlIANDONXENT..
'rhe invention described in said Brush patent No. was not abandoned by . by the descriptions in letters patent Nos. and 261,005, which were issUed to Brush,.July 18, 1882, and August 1, it apPllarlng that t1:le application for tbe patent No. 387,298 was sworn to two days before the applications for said patents Nos. 261;512 and 261,995 were filed, and that' it was filed six days after it was
W.
6.
SAKE-CHANGE IN ApPLICATION. "
0;
Said patent No. 337,298 is not invalidated by the fact that, after the original ap. plication was filed, the expression, "mechanically applied porous, granular, Ilpongy, or equivalent lead, " was phanged to "mechanically appliM, absorptive substanoe, " since such ohange of language did not ohange the invention. . . " .
SAKE.
Baid 'patent is not unlaWfully expanded by the addition of the word "perfOrations" to .the dl1scription of the .plates, whiohwere originally des.cribed as ribbed 01' since the word "perforations', ". as so used, will be held to mea.n cavities in the plate, and not openings extending through it. "
7.
SAME-INFRINGEMENT.
infringed by a device consisting of metal support plate, with receptacles, and an exterior mechanically applied active material.
,
by cast, or 'porous coating of
S. BA:ltIE.
t.
'rhe tentll cill-im of said pat,ent No. 387,298, for "combining by means of pJ1lBsure an absorptive substance and suitable material to form a support therefor," in the process of making a secondary battery Rlate, and the claim of patent No.. 260,654, issued July 4, 1882, to lIaid Brush, for forlUing the plates Of. a secondary consisting in forming receptacles in its surface, then applying oxide of lead to the plate, and within such rece!'t.acles, and afte1'wards subjecting the oxide of lead to pressure," is not infringed by a q,evice in which the coat.ing is put on by the pressure of a trowel o):'spatula,without the use of hydraulic -or other similar pressure. SAXE. Clahtlsl to 6 of patent No. 266,090. issued. October 17, 1882., to said Brush, relatItlg to the,form of the plates for secondary batteries I\S having "ribs," are not ,infringed by a device consisting of plates perforated by uniform square holeS; since the walls between thelle holes; are not" ribs." . . ,
.
..
10.
BA81:iin7 of said patent No. 266,090; which desoribes the plates as having "ce11s" or SAME-NOVELTY. .' .., ; . '.',. "
oavities," and claim 14, which describes it lL&'having "slotsj'perforations,or open-' Ings;" ,are infringed by Claims,.9 and of said patent No. 286,090,.. which deS(ll'ibe' the material of .the' plates as cast lead, are void for want of patentable novelty. ..
68(), 111.
FEDERAL
H
vol. 41.
SAME-DATE OIl' INVENTION.
The invention described in letters patent No. 252,002, issued January 8,1882, to C. imp\'O\':ements in secondary batteries, having bee/} conceived by the A. Faure, patentee in France while a citfzen of 'that country, he cannot claim the invention here earlier than December7, 1880, the date of the delivery of his French patent. Following Elect1"Zeal Accumulator Co.v. JuHen Electric Co., 8S Fed. Rep. 117.
In Equity. , W. H. Kenyon and W. a. Witter, for complainant. Tho,nw W. Osborn and H.M. Ruggles, for defendants. COXE, J. This is an equity action for tbe infringement of four letters patent, granted to Charles F. Brush for improvements in secondary and now owneil by the4?ofPplainant. These patents are dated and nutnbel'ed as follows: Nos. 337,298 and 337,299, were applied for June 18, 1881, and ware granted' March 2, 1886. NO.. 260,654, was applied for June 13, 1881, and was granted July 4, 1882. No. 266,090, was applied for June 9,1881, and was granted October 17, 1882. these, No.,'S37 ,298,'Yhich is distinguished as "Case I," relates to secondary batteries, and consists in a plate or support provided aJIlechanically applied coating of absorptive substance adapted to be trllQsformed intoan... a,ctive coating. Also, in a plate or support providedwith a mechanically applied coating of granulateq, spongy or porous metallic lead, It further consists in the method' of constructing plates for secondary batteries, consisting in mechanically coating lead, or other sllitableplates, witb an absorptivesubstance adapted to be transformed into an active coating. The drawings attached to the specification represent thesupportsih variol1sforms. They show plain, studded, honey-combed, corrugated and ribbed plates; plates with angular corrugatio/ls, arranged singly or in pairs, and plates with slots or through th.eplates. .The active material consists of granular, porous or spongy lead, which is held in position upon the plain plate of lead by a sheet of heavy paper, card-board, cloth or felt, which plate by rivets,ties or binding strips of wood or metal. The paper or felt may be dispensed with andtbe spongy lead held in position on both sides of the support by subjecting it to pressure; li#Opl.uUc or otherwise. In the corrugated, grooved, ribbed, perforated,' studded or cellular plates the spongy lead may be held in the grooves, cells or cavities 1)y paper 01' felt, or it toay ,be rammed or pressed into them. The specification states that" when a pair of plates a secondary battery, arid immersed in diare associated togetllet to lute sulphuric acid and charged by the passage of an electric current t,he usual manner, one of the plates absorbs a large quantity of hydrogell, wJlUe the other plate has its spongy or granular portion peroxidized, and thus forms the oxygen element of the battery." . The claims allege4, to be infringed are the first, eighth, tenth, andelev:enth, They' are as follows: '. . "(1) A suitable plate or support, provided with mechanically applied abo and adapted for use asa secondary battery element 01' after being rendered active by an, as
BRUSH ELEC'rRIC CO. tI. JULIEN ELECTRIC CO.
681
set forth." "(5) Animprovement in the construction ofa secondary battery in a plate or suitable supelement or electrode, said ir.nprovement port provided with grooves, receptacles, or perforations primarily coated! combined or tilled with mechanicaJ1yapplied absorptive substance. substantially as set forth." "(8) In the process of making plates or elements for secondary batteries, primarily and meehanically applying or combining with a suitable plate or support an absorptive substance, adapted to be transformed into .active material, substantially as set forth." "(10) In the process of making a secondary battery plate or element, combining by means of pressure an absorptive substance !lond suitable material to form asttpport therefor, SUbstantially as . set forth. .(11) In the process of malting a secondary battery plate or .element, constructing a suitable plate or support, with grooves. cells, receptacles, or said plate or support haVing an absorptive substance primarily .applied thereto or combined substantially as set forth. " The patent, No. 337,299, which is distinguished by inventor as "Case J ,"is for the same inyention, substantially, .as Case 1. The drawcings of tijetwo are identical and the language of th.e· specifications.s very similar; where it differs, equivalent expressions are employed. . the principal differences are the of the words" activ:e ,material" for the expression" adapted to be traDlilformed intp an active coating,"of Case l, alld the words" lead oxide" fQr the "grapular or porous lead,': of Case ,'. · The specification in question contains this "Peroxide is the best oxide of lead to;usein the preparatioh plates: but. as this ill rather expensive to prepare, ,red lead or minium !Day be used. Some sulphate of ' lead is liable to be formed when this oxide of lead is employed, by the action of the sulphuric acidoLthe battery on:it before peroxidation <;If ,reduction is effected. Protoxide of 'lead or litharge may alllo, bEt used. but ia ,objectionable, on accon nt of the large quantity of sulphate of leal! which is lmavoidably produced by the action of the acid·on it." , And also the following: "1 would have it understood that I do not restrict myslllfto any particular form of active or absorptive material, or to any particular method of applyink it toof.comblning it with the plate 01' support, as my invention consists, broadly, in a lIecondary battery plate or element having active or absorptive material primarily and mechanically applied thereto or combined therewitb, as, contradistinguished from a plate or element haVing the active materil;ll prodUced by the disintegrating action of electricity, as in the well-known Plante process. .. . The cll!>ims alleged to be infringed are the first, second, third, sixth, seventh, eleventh, twelfth, and thirtoonth. They are as follows: "(I) A lIecondary battery element or electrode of a plate or suitable support primarily coated or combined wi.th mechanically. applied materjal, or rnaterial adapted to become active, substantially as set, (2) In,a secondary battery, an electrode consisting of a plate or support provided with '!lcoating or sqrface layer of an absorptive substance, stich as metallic oxide, applied thereto, substantially as set forth. (31 A plate or atiitable support primarily coated or combined with mechanically applied oxide of Je!\d or equivalent lead compound; substantially as set forth." ""(6) Aplate or. :s uPP.Ol't pr? with or receptaclEll\,; ;to!! primarIly coated, combmed, or filled with rhechallicaJly applied active lDaterial, or material adapted to become active, substantially as set forth.·(7) A.
the
· plate ·
·
with · Qr
and, prnllll,plXl
:or
as wIth of
e
oXIde of the
s\ibstllntjally M ·s/l}itJ!.ble '" a,', ,.priQr, "i
Tnll,
apphe(l req lead, formmg the ,',0r, S,", sub'or for
11\,,(lJ1 ,
qqnsisting in coating, the plates the
mechanIcallY"ln triC,',al,4i,',s, ,Pf, th, e, ,The, melqod pfmaking .
with
WIth red lead
tW() f#h4f!.mental-patents t,O cover the' broad inventions of Brusll. No: 260,654 fS'8:'(iWisiOn Of distinguished by the invetitoras "Oase J, '" the the plates batt,ery consistifig in ·forihing receptacle! for loxide of lead 'in then'applying'oxide of'lead to the· phtt'e8!and within such 'TooeJ'taiiles and of lead tdpressure." The , 'of this ident,ical (:With those of the pi'eceding patents, 'lijxce'IJtfthat'Fig: specification eontains.,the above quoted,ft0in; Case J, relative to perM:ide'being'th(Jbestoxide of'leadto use; and 'says; further, that : by being l'll:trlnied ,or pressed iis follows ·methOd 'offorlliiTlg r!the plates of! a" secondal'y 'bafitery,' consisting in fOJlming"teceptaCles tor I oxldb' ofleadl1n its surface. Jthlln 'applying oxide of
ileadI4lo)tha,plllte -and rwitbioBuch rec:!eptacles. flod afterW4rdssubjecting tbe oxide of lead to presshre;,"j,i1 ' i f \! "",','"
(A I
"
2,66 s090 s ,receptacles"
0, n OJ' PI19Jeeti0llJ,
in Its surface,
,.wheroby anextendf.JdaurflliC6of,metal is: exposed,to:aotion.: ,The drawingB'areJtnesame' as'th0seattachEt<lto'.the' preceding. patents, 'with SOme pl!ltilS 'ready1orclJ:arging. The 6f Fig;'ij :that it a form Of ribbed plQte resembling an ordinary window-blind with the slats It may also ·De ,'rega1'de{l thick': plaW, 'with a series; :(jfparallel slots. And ofF,igU'6, that 'it'. sIllows-the' hortey-combform of plate,resembling "in, 'ConBtmiction a simple·orddu'blecomb' of ,It may have its he made by
;new
i
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"als,o ,pllititElEh, thy, tneltedmetal into suitablEl,mtxqlps.,,"" " , "'iii ,'I, ,'l'b'e ol8:hns' alleged to' be infringed ate 'the:first,tbirdi fourth; 'fifth, · '';t'hey ;aralia
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BRUSH ELmiuc po. ,. JULIEN _ELIlC'JRIO 00.
. "(1) Iii a secondary battery, an element or electrOde made up'ofasel'iesof! ribs, substantia)ly as an(l for the purposes set ',' "(3) A secondary battery elemflI;ltor.electrode having its body support or frame provided wi til ribs. (4) In a secOnd'ary battery, the COijlbination, with one celltiu!reof,of two or more elements, substantially ali set forth. (5), In a secondary battery, a plate, frame, or other sustaining body provided' with' ribs or! their equivalent, of a leas general thickness than the said plate or support, substantiallyas set forth. (6) In a secondary battery, a plate, frame; or other sustaining body provided witll ribs or their equivalents, said ribs or their equivalents being thicker at their bases than at their free edges or ends, substantiallyas set forth. (7) A secondary battery element or electrode haVing its frame', sl1pport, or body provided with cells or 'cavitIes, the walls of s,aid cells or cavities, or the septa between them,'having an increasIng thickness from their outer or free edges in ward. (8) In a secondary battery, plates or elements provided with comparatively thin ribs. or their equivalents" for surface and thicker ribssliitably disposed for, orlltiffening purposes, SUbstantially as set forth. (9) A sec?ndary having a body, frame or support of cast lead.." "(12). A secondary battery' element orelectrode havillg a supporting bcidy 01' fralile of cast lead for the activeceating or substance, said body or frame provided with ribs or proji'ctlous." "(14) A secondary battery element or electrode having a supporting body or frame of cast lead fQr the acti ve coating or.substance,"said body or {I'ame' providlld witb or openings." \ The made. used and sold secondary storage batteries composed -of a series of consisting of a support plate, 96,per cent. being metallic lead, and an exterior spongy-or 'porous coating of mechanically applied active material consi!.'lting of lead oxides. These electrodes- are, placed in an electrolyte of dilute sulphuric acid in water. The charging current converts the lead oxide ,coating upon·the oxygenplil.tesintoperoxideoHead .and reduces the lead oiKidecoating' upon the hydrogen plates to the condition of spongy or porous metallic lead. The battery is capable of numerouS charges and discharges in the course of which the active material undergoes successive reductians'and Nlo:x:idations.The lead oxides· used cortsitlted generally of:minium and litharge, the former largely preciominating in the mixture applied to the oxygen' ,plates-and ·the latter predominating ill tbe-nii.x:ture·applied to the hydrogenplntes. ' \ The defenses to all of these patents areanticipaiion, want 0(' hOvelty, la.ck of invention,' abandonment No. 260;654) and that the claims'havebeenfatally brpaclened. As to Cases t 'andJ'it, lS 'said' that, the scope' Qftbe has been unlawfully enla:rged; that the patents expired with an Italian patent to Brushcontaillirtg the: same, invention;artd, :finally , that they ave fol.' the samd :invention'S' and that one of them is, ,'hereforll, Noid. " 11' is also illsistedthat 090 is iimited by the Italian patent. Invalidityand·non:..iRfringement of several claims are alleged., ' ·,AreCases,J and J .for tbesame invention, anel, if so; what·co·ursa should be pursued regarding thQm? It will simplify the ooritroversy t0 1 answer this question at the outset. As stated above;; toe drawings of :/l.I:e the aQ9.the language of claJms: ,af,e.; $ubstantiaqy alike upon all matters ma,tariaL 'Fhe eontentioa;oLtlhtl, complainants is thJl.t Case I iafo:\', a secondary' batterysup-J
or
684
DDERAL BEPORTEB,
I
port mechanically coated with an absG7'ptive material and Case J. for a similar suppott cotited withan active .material; "the dIstinction between, the two relating to't11e condition and inherent capacity orthe material of the coating as exists at of mechal)ical application." For instfl,Oce"the spongy lead of Case. I has, it is said, no oxygen and is initially absorptive and inactive, while the peroxide of Case J is a fully saturated oxygen compound andis, therefore, active and non-absorptive. It is admitted that the moment a battery, constructed with plates having either coating is charged or .discharged, all distinction vanishes. "The fundamental distinctionbehveen patents," says the complainant'Ej brief, "is that in the forr;ner the coatings' of the secondary battery; electrodes are, broadly, mechanically applied abso1ptive substance, while in the latter' these coatingsa.re that· class of. mechanically applied a1;)sorpH va; SUbstance: defined as active niaterial." , Therefote,' both pat.. it ill arg4ed.; ,." . ' .. ." ' qU,otat\pn, though it isana9curl;tte statement. ofthe difference oot)\looo the two, would s,eem quite ,tal).tamqunt a party may have a patent for a device composed ora combination of iron and wood and a eecondpatentforthesame device composed of iron and' basswood or hemlock. One who has a patent for 8; combination, one element of which is an adpesive substance, may 11ot, nave a second patentfor a :CQmbipation identical in every respect e:xcept1bat the adhesive J:lla.tedIl1 Eluggested mUfjtbe ulOiste,ned before it becQInes adhesive. "The q,0,atingsof both patents being absorpti,ve and aotive, is the fact that one, prior: tQ iInmersion in the electrolyte has absorbed, and thaUhe other 'UIill at cmce absorb, a sufficient dissimilarity upon which fO base invenIs it a patentable distinctio,n? The difference.is one which ;would h$rUly,:,;occur to a practical electrician, and even specialists enthusiastic lAthe cause .ofthe patents, find it diffic,ult to state it in words which are iptelligible.toordinary men. It is too esoteric, metaphysical and minute. lit is a mere theory of the scientists and not a fact upon which to {ol;md a patent. '., !The Brush's.broad invention was an imt>rovement \Ipon the secondary batteries of Plante, by adding the porous layer, a.lly"wthe supporta, in the manner described,instead of forming it by the tediQusand PiIlocesSQf di,sintegration in the body of the therp:selves. When he is thoroughly protected in this invention he has'reQeived all thM:he is entitled to. By taking :two patents he should not be permitted to Dlultiply claims which. could not stand side by;sidfdn: one and the sarne patent. There seems to be little controsubstance!" and,'ll,active material" are used in the and,! equivalent terms and have been so \Ised since the time of Plante. The inventor, himself, appal:eBtly so understands he frequently: used theminter.changeably, not only in his tes' thpQ,ny,' but in the patent (Case J) itsEllf. , Professor Barker says: ' .. the art, as it seems to me. the terms are only entformsof expressiOll"for oile and the same thing. ,A secondary battery· isc.olltamplated in these patents, can consist of 'but two
BRUSH EI.EcTRIC, CO. tI. JULIEN ELECTRIC CO.
686
essential parts: (1) Thematerlal olthe coating whicb gives to tbebatterylt1 usefulness, and to which is due its capacity of storing electrical energy; and (2) the conducting frame or support upon which this material is spread. Since upon the former the action of the secondary battery depends, it has beeome the general practice to speak of it as the' active material' of the electrode, in contradistinction to the support of the plate itself, which is or should be inert. The function of the coating is to change its chemical condition, as, tor example, its state of oxidation, so far as to vary this condition in one direction in and in another on discharging. · · · Since, in my judgment, granular. porous, or spongy lead, the substance of the first patent, is ·active material, or material adapted to become active,' in the of lead of tbe second patent 'are words of the second, and since the absorptive substances adapted to be transformed Into an acti ve coating' in the first. I am of the opinion that the ·absorptive substance' of tbe first patent, and the ·active material' of the second, are to be understood as equivalent terms." The'court is fully satisfied .that this conclusion is oorrec,t. The identity of the two patents can best be illustrated by placinK similar claims in juxtaposition; the first claim of Case I and the first and second claims .of Case J, for instance: CASE I. CASE J. (1),A,8uitable plate or support pro(1) A secondary batteryelement-or vided' with mechanically applied abo electrode, consillting ot a plate oi'spit;.. sorptive substance, and adapted for able support primarily coated or com.Use al1, '" lIecondary battery element or bined with mechanically applied ae:. .electtode" after being rendered active tive material, or material adapted to by an electric currllot, lIubstantially become active, substantially as set forth. ' as Bet forth." (2) In a secondary battery, an electrope consi&tlng of a plate prOVided with a coating or surface layer ofan absorptive substance, such as metallic OXide. applied thereto. Bubstantially as set forth. There can be no question. i{tlabsorptive and "active mate. are equivalent that these claims are for the same invention, Each the following elements: (1) A secondary battery suppqrtplate, (2) mechanically. coated with (3) an absorptive or active material. The question then, is, can a patentee who has received a patent for a plate coated with absorptive substance obtain another patent for the same plate coated with active material? Can an inventor obtain two patents for a broad invention because in one he practices the invention with one subitance.and, in the other, he practices it with an equivalent substance? Manifestly notl . . After Case I no one else could have had a patentfor Case J, eveni! (lonfined solely to the points wherein the two are said to differ. The former includes the latter. I am constraine4 to say, there.{ore"tha.t the two patents are, in legal thesaUle.Although bility that the court might reach. this Was stated ment, neither counsel offered an:}" solution PP-gehas been The. aitqation .ill" (lerta;Jl,ly.. ;ap, !
for at tM and gta:ntedat 'same time. It is true'tl1;it'rio injury can result in this instance, but what if one ofthese patents were owned byat'hird were brought on)t against the defendants for the same infringement, or, if the secondpatlmt were granted years after the If'theprinoiple is once established that an inventor by are shown,obtain two ents,fol' tile same invention tllegreat,est injustice may both to competitors the public. It,iould seem that. inventor bas given Case I the.. p.reference and aahis expert regards broader oUhe two patents, the difficulty might be met by a surrender of Case J or, perhaps, by a 'disclaimer claims in CaseJi, leaving those which' ha:veriot been brought"itito'c'ontroversy or considered, and, possibly, tp.e red-lead claims, to stand. But, as neither cO\lnsel has eXon.thissubjectithe method of carrying oUt'the opinion 'ofth,e' c'ciUrt best. be arranged on the settlement of tha decree. , Miihy of'the propositions no\i ItdV'ti.ncea· were examined' and decided, upon identical testimony, by this court in the case ofEledrical Accumulator 00. v. Jufien Electric 00., 38 Fed. Rep. 117.,: These need not be againi;cdnsideted. . A definition. of a battery was there attempted,'ll.nd is now adopted for the purposes of this controversy. .When the:pres,ent in,yeritor relers to,a>isecohdary battery heriJeansprecisely -Re,ute'1l;)eant when be used that term. !twas' furth.er decided which'Yeretbe approximatioDs to the invention wellO; fAe article from the Electricil1llof 1863, tM Repolltofitbe SmithsoniatUnstitution for 1856, the Grove gas battery; and the patents to Kirchhof and Percival. .· . Fiuue's claim, beforepei,tlg limited by a disclaimer, was broad enough electrode to which the active material but by galvanic action, chemical precipitation or in any other way, so that it was not formed out of in·thetn'l't'nb!3l'described oy The evidence with the teStimony of Mr. Brush, was regarded as to the ,application of the active ma,terifilin the described'bthim, namely, asp; paint, paste or, 'Cement·. ,Wilil.lleft'ect the evidence dIsclosing thepri:or art 'had upon tbe patents ,in suit ,waS; of coursei' not'directly considered. ' 1 i' . 'Tn thec6fu plo.inrunt s space is ldevoted to the estab.. lishmetl,t '6£ the propositioothlit"Bi'!Ush was, in contemplationnt lel'lst, prior to 'Faure. >It i8:twoughtthata disou.ssion'upon this point is unnecessary. . The precise question was presented and deeided in the inbefurethe' 'p.tea1J..otfice and' - tn· the' AccwmUlator 'tlounse}, liavingAh'etie·· colltenued that Brush an" ticlp'afed, FaWte,recognizes;the impt'dpriety of now ebntending that Faure Iintil6i}5ittes 'Brtisli,4md testimony in this behalf Tb,e'decision 'heretofore inlldeupotr:the same SUite of fact,S will ,I tlitlrilf<\¥e, be adhered to: It Was there decided-although the 'dlite was' not\liefiiiiteYyf1fiw---thll.t Faure, Ming a'tlitizen of France,and
CO. 11.
CO·
his ipventionin a foreign country" WllS not1lel'Ulitted to (llaimit bere earlier than the date of the delivery of his French patent,.....,..DeQeJDber 7, 1880. Faure's contribut.iQns to the artnee9.. ,theref,ore, be considered in this action. The proof now offered toestaq.. lish, invention was carefully examiQed in tbe Accumulator Chse and it held tha.t"the evidence of Mr. Brush as to what he accomplished in18,79 ·and 1880 mllst be accepted as true." , What diel Brush accomplish? A history of. his aJ;ld tbeir,resl}lts is given at length in the other case, {pages 129-131) and neednpt'beagain In brief, it is this,: . :In the summer of 1879 he maPe secondary battery electrodes by applying. to, suitabl(l plates an apsorptive coa1Jng in respectively, of lead in the form oia fine lead"an!l . .. "These, were: held in place by,a:piece of blotting paper, al;ltrip of wood and a string wo.und tightlyarot;lnd the whole. · In J l,lly, 1880, he made lead with deep grooves, of l'!qple · )·el1owoxidl'l. oflead and in others slJ.lphate of lead. In f3epplates grooved by IJJ circ1l1ar saws and two; hY1'llmming them fv.ll :0£ and. ,of t,wo , by: :rammiQg, them fp,ll of sulphate of lead., The electrodes thus cmerq.ted s.qccessfully. in secondary batteries ; .. "Mall-yother structures to tb,e. , but it is not necessll:l:Y to consider in detail. . It. may be said, however, that from the time the idea first entered bis mind uu,JiJthe were filed Mr.:ijru,sl,l, alIIll)st .in prpgressjyf'l: 8:n4 investigations. ,Ji'or · in tile 4.ceuml,flator Q,tse it isthoqght that this inventionis · by the 1;estiIIlonyof Professor der Weyde, the, Electrician,. Grove. or. the patent& to ,:Kirchp.ofpr (39 Fed. Rep. .. . : -' . It ,of granted to George G. Percival, ,A,pril3,-1886: ;Percival also, as sho.wn in his Unitell States. patent li\'o.,lj3,· .1l;lprOVe on method by saving .. describell a,secondary batteryconaistirig of one pair of, eleqt'rodes placoo in a'ra· ter-tight IWoOdtln box, divided it) its center by a 'porous partition; On ea:ch ,side dirthis partitIon is a layer OJlpowdered gas carbon.' '. 'rhese layerli COIlSt!I tute. th6i!twoelectrodes andw.henin use they are wet. by a proper,solution· .For ClltlV,6D.lencein establisbingconnection with these laYers there is on each fa\itened to a strip whicb, is in cOl/tact · end,qf. tJie box' a carbop. ·Lead or ,I)>>y ,othersuitable metal in the of .a .coarse powder ,may be substituted for 'the gas carbon;' '.fhis appears' to · what analogous to some of the forms described by Faure. 'J:hecotnplaiuant ;ct:mtends!tbat tbe reference is valueless for tbe reaSon that there lilrio sug.,gestion: of:& conducting support plate like Faure's whiCh holds to each and all pal't,:of it so that becomes!'!pollgyan(l thus recdving and dischNging Jq ,thE! Perdvld battery is without the Fau're plate." Rep. 126.· . '. '., 1 .;. It il'\ that PllteP.Jt is an anticipll.tion of cllliD1s 1, {)f ,9a,s!l i,This }S pJ!obably ifayery .Qn
688
hDERAL 'UPOltTER, vol. 41.
these claims, but there is nothing in the record requiring such a construction. There is no evidence that a Percival battery was ever used ,or could be made operative. His invention does not seemto be on the line subsequently followed by Brush. He has no plate or support at all resembling those of the Brush patents. He has no coatings. His two copper connecting slips support nothing. The pulverized gas carbon is not mechanically applied to them; they are simply in contact with the gas carbon; Their presence is not necessary; they are put there for greater convenience, only. Perciv81'selectrodes are not coated supports at all; they are cells filled with coarse conducting powder and divided by a porous partition. Percival's ,claim is for "the forming of the electrodes , .of a secondary pile of layersof'gas carbon or some other conducting :powder, substantially as andior the, purpose hereinbefore described." Is it not clear that he did hot have in mind a lead, or other suitable plate, with a layer or 'coating 'ofadtive materill1tnechanically ,applied 'thereto? It would' seem then thalnothing in the record anticipates the Brush patent, Case I, when a constraction commensurate with the invention is p1n.ced upon it. He did not invent secondary batteries, or 'electrodes for such batteries having illayer of 'material, or the use therein of a conducting powder, but he seems to have been the first, in this country; who held the absorptive substanCe, in the form of dry powder, in place on the supports by paper or equivalent material,and the first who rammed or pressed it into grooves oi-receptacles in the plates. '," , The invention of Case I was 1'lOtabandoned by de..'lcriptions in patents Nos. 261;512 and 261,995, granted to Mr. Brush, respectively, July 18 :and August 1, 1882. There is no evidence as to when the applications for these patents were filed, other than the date appearing upon the 'specification, and this' would seem to be insufficient proof of the fact. But accepting this date, June 9th! as the true one;onlyfou'r days elapsed before the filing of the application of Case I,-June 13th. The inventor was not responsible for the delay in the patent-office, which was occaby interminable interferenCe proceedings between him and other inventors. His intention not to abandon is demonstrated by the fact 'that the application for the patent in suit was made out and sworn to ,two days before the applications for the prior patents were filed. In ;Holmes Electric P,·otective Cb. v. Met'i't1politan BurglarAlarm,Cb., 33 Fed· . Rep. 254, this court decided that where a patent fully describes an in'vention which could be therein; and no reservation and -gives no warning to the publiQ, a second' patent granted upon an applicatjon filed months after, the fi.rst patent was issued, which claims "simply the invention previously made public, is invalid. ButthecouJ.:t -also used the following language,which seems quite applicable here: is n9fthe case ofapatentee who has made, application tor the secorid patent before the first is issued. It would unfair to hold him responsible for the action of the patent-Office in this regard." It is thought no authority can he found holding an invention abandoned upon such facts as are here developed. I should be sorry to make i
BRUSH ELECTRIC CO. t1. JULIEN ELECTRIC CO.
689
a precedent now which can have little but the most technical reasoning to support it. This patent is not invalidated by the introduction of the descriptive term "absorptive substance" after the original application was filed. The claims as originally stated use the language" mechanically applied porous, granular, spongy, or equivalent lead." . The claims as issued substitute the words, "mechanically applied absorptive substance." This did not change .the invention. It was the employment; simply, of more-apt and and artistic terms for, the, comparatively, clumsy language of the original. It is.argued that claims 5 and 11 of Case I have been unlawfully expanded by the insertion of the word "perforations" therein. Neither the specifications, claims or drawings, as originally filed, mention perforations extending thr.ough the plate. They first appear in an amendment filed June!, 1882·. Prior to this, in the summer of 1881, Prof. Eaton . had' made perforated secondary battery plates. Accumulator GaBe, 38 Fed. Rep. 141. John S. Sellon and Joseph Wilson: Swan had described similar pJa.tes in their patents of March -10, 1882, and November 22, .1881, respectively. It is not contended that Mr. Brush e\'er made such a plate. There is no. proof that he did and he testifies that he cannot recall having done so. The: value of perforations extending through the plate seems to be conceded. Proof ofthe advantages of this construction appears in the record and the Sir William Thomson, who -testified in the previous cas.e, may be adopted as an epitome of what is affirmed by the witnesses here. See Accumulator Case, 88:Fed. Rep. 140. The complainant's brief contains the following: "Thus'perforations may in bis view be a specific improvement over recesses or receptacles broadly considered. but recesses broadly cbnsidered in combination with the mechanically applied active or absorptive material in a secolldary battery is the llubject of the claims now under consideration.... And again: to the improvement in recessed plates which consisted in carrying the recesses thr6ugh the plates and forming perforations, Mr. Brush has no separate claim for that specific improvement. Defendants insist that Swan has the prior right to that specific improvement. Brush's claims are for the broad ground of a recess. and it may be that Swan is entitled to be considered the first who carried the recess tnrough the plates, making a recess which was also a perforation. But that question does not arise here." But it seemS that the question does arise. The claim is certainly susceptible of a construction covering a plate containing receptacles not only, but also perforations which go entirely through the plate. In other words it may be construed to cover the features Mr.. Brush is entitled to as well as the one he iS110t entitled to. So construed an infringer after raying complainant for the use of the recesses which belong to Brush might also be compelled to pay for perforations which, 80 far as this patent is concerned, belonged to some one else-Eaton Sellon or Swan. Neither of had a patent for this specific improvement coqJ.d prevent complainant, with the Brush pa,tent construed as above, from using perforations as distinguished fromrecesseB. The comv.41F.no.12-44 co As
\.:690
nion meaning ,Of'f perforation " t'Qf apetituie passing through a body. It is argued that the patentee intended that this meaning should be adopted,t'ol" 8'!!lhdws a of a ribbed 'plate provided ,with slots or perforations, through the plate;" And yet, ,specification wouldimIDti:te that he intended petforationsltndreceptaclea. As before to make :first appeared a' year after the original lipstated, the doubt, therefore,whether these ,facts do not,bring the oosewitllln'the rule laiddownin,Railwayc'o. v. ,Sayl6s;97 U.:S.563jKittle 508; 014, and cases cited. " "I.
But corisideratiol1shouldbe given, to the unusual circumstances' at"tending the,filwg of large a nuinber of applications and, drawings at ,oraboukth,e, sailie time.' 'The inventor seems to have tholight that by 'cross,teferences theinforma;ti,on in all could ',be imported into leach sepbately..This1 oortainly) upon ,the "question of intent. ,The drawings whichhelaftetwards'filed in' Case I were in faet filed with i Case C and were ;in thEr 'patent.office when the aptJIica1don 1 for Case I Was tilled. The ,third claimj'asoriginally lnibbed, honey' Ifj the/claims as finally allowed maybe ,combed or ,fairly con8tru.edto<oovelltnothing more than a equiva,lent plate" ,wnich 'cei'tdnly contemplates a: platecotltaining cells or cayities,; can it .be., the'claidlsdn' been fatally eJ!:pand !d:? ,: Itiiil'true that ,the ordinarily, accepted- meaning of the word "perforation" would imply :anopeningrextending: entirel:v" through the j,l1\T.ElutQl1 could l?tOt ingraft,upon the:orig.,inalapplication"!IButitheword ;ma-y.;also ',;with ," cavitiEll!,l'or "'oelIB, "it- mayn'tfiean a hole" passing entirely through, but into the 'Center or 'interior; and aplatifwith 'such petfdrations the inventor was at liberty l it would seem, to claim 1:lp'dertp,e ,orig)J)al " S,u.ch d()es, nqt the the forlt does 11O,t, of. the c1alIJ!. ,:ij inventor, strwUy to, whij,t,he fOlljn:the, first instance. "When,bya liberalconstrucbion, .a:patent may be'sustained,'is it not ltheidutyof the Mttrt to adopt ittatherthanone,which, though possibly :imore plausibll!;' wi'll deprive the patentee Qf th'a fruitS of Ii meritorious invention to be; Is fatHy entitled?' . With conlsiderable hesitatio'n , :Ii<shall hold that! :tliese iclaims, asthtis ,construed, ave: valid. That they ,a.reinfringed there caribe litt1e'doqbk ' The defendants' elactrodes haw 'reeeptacles;theyniay berimproved . receptacles, butthey are reoeptacles 'nElvertheless. These claims do not cover the impro'Vement. :Regarding the pressure claimsj so called,thedetenses are thatthey ;111le void forwantofinven!ion and i if a ;construction ,is' ,placed upon them ',mfficiently narrow to enable them ;to the defendants do not' in,friDge. The tenth cla.'im of337,298:isa8'foUows':"r ,!' " <
.form 8 support therllBorj'18ubstantially as setfortb." X-I
:
1
BRUSH ELECTIUC CO. tI. JUVtEN ll:LEcraIC CO.
691
The only claim af No; 260,654 is as follows: "The method of fOl"ming the plates of' a secondary battery, consisting in forming receptaolesfor oxides of lead in its surface, then applying oxide of lead to the plate and Within such receptacles. and afterwards subjecting the oxides of lead to pressure. " The la:tteris It narrower claim than the former, being limited to ox.. ides of lead, to support plates having receptacles and to pressure after, and, therefore, in addition to,the mere mechanical application. It is not denied that the prior art plainly reveals the use of pressure in making primary battery plates. The distinguishing feature of the invention of these claims is pressure. Every other element is 'covered by other claims. ,It is argued with plausibility and force that it is not invention for the patentee, with the c<>atedplate before him, to subject iHo treatmentwhich, he could easilyha\l'e learned from Leclanche and others. It is said,thatth'e function of pressure is the same whether used on a prior secondary battery electrode and that the claim cannot be upheld by importing into it all the valuable features, of the broa:d invention. It is: contended for the complainant, on the other hand, that piessure applied to secondary battery plates produces an entirely different result and performs an entirely different' function· from that produced whenap:plied to primary battery plates. If the claims are .limited to the use of hydraulic,or other similar pressure, the court, as now advised, would be inclined to recognize the force of thlfcom plainant's contention. But the construction asked for is broad enough to cover the application of the absorptive material with trowel or spatula and the incidental pressme attending this operation. Says the complainant's expert:' ' . "In the plates of defendants' battery I tlnd a series of small cells perfectly tilled with an appart'ntly uniform and extrpmely even mass of absorptive terial; I .\tno.w of no way in Wllichthis could have been effectively dOlle cept by forcing into the perforations the either in the form of a or of a powder; generally theapplica'tion of the absorptive substance to the plate is accomplished lJy means of a trowel or spatula; the' 811pport is usually laid upon a slab of such as slate or glass, and the absorpti ve material in the form of powder or paste. is spread over the, pillte .and forced into the perforations; considerable pressure is .ways applied"to the material to force 'it into the receptacles; ,the excess of material. i!J remov,ed by a spatUla or some eqIIi valent i,m plement.and the plates are tl!e\lquite smooth, the absorptive material haVing almost 'the ,thickness of the support 'plate; from a careful examination of defendants"bittteries and from my general knowledge",sW the methods em· ployf'd, 1 am ()f the opinion that the absorpti,ve material hall been applied in sUbstanlially' the,manner of, the tenth claim above dt'scribed. and that coul:iid.. emble pressure'hl;\Sbeen employed in the operation." There can be no doubt thai a construction as broad as here demanded would ,invalidate the claim. ; It would cover a well..known and exceed.. ingly aim pie operation. It would cover the mechanical' application of the coating. It is hard to conceive how it could be made to adhere without sOme degree of pressur.e;' Even theblotting-paper,stick.and string of the 187geleetrode would infringe. Pressure such asl<this. it is believed, was not contemplated' by the inventor.. He inviewpres,s..
692
FEDERAL REPORTER,
ure, plus the mechanical. application; bY' means of which the coalings would adhere more perfeotly hot only, but by which better conductivity could be obtained. But if the narrower construction is given these claims, the defendants do not infringe; at least they have not been proved infring-ers. I do not lose sight of Mr. Weston's later testimony taken April 3; 1889, but it seems to me that it adds nothing to his fprmer statements, upon which the court would be warranted in acting. It is hearsay merely and wholly indefinite as to time. The bill was filed in April, 1887,alleging that before the commencement of the action the defendants had infringed. This allegation is hardly sustained by the testimony of a. witness taken two years later that he has been informed that the defendants have infringe,d Jor "some time." The stipulation signed by the defendants' solicitors, designed to cover, undisputed matters upon the subject of infringement, makes no mention of pressure. Case C, No. 260,090, contains two dasses of claims. The. first. class (claimi8 1 to 8 inclusive) relate tothefol'm of the plates, the second class (claims 9,12 and 14) to the.' material of which thepla:tes are formed: Claim 7 relates ,to. a secondary. battery electrode having its support ,pro. -vided with'fcells or, cavities/'. ,.The other claims of the first class relate . Claim 14, in addition to the element:of,cast lead, ;has also the element, not elsewhere claimed: in; this patent, of "slots, perforations! or openings.," '! It is said that the defendants do not infringetbe claims of the first class, other than the seventh, for the reason that they do not have a r.ibbed, support plate. The 'langnage of the seventh claim de-scribes with, much greater precision the defendants' supports thltn that of any other claim of this class. They certainly use cells or cavities.. Whether they use ribs or not is, at least, doubtful. If there were nothing in the art but the contributions of Mr. Brush it is evident that a narrow construction must be given to these claims. Every word by which, eVen a shade ofdistinctiol1 in:, the formation of these plates Can be prtlssed has bsen' adopted. Advantages of the most surprising and mysterious cbaracter!J,re said to lurk in the slightest change of size, shape or recel?ses" ,In these circum!ltances, a difl'erent or depth in the rule should be adopted than if the art showed that all these methods of keeping the active material in place are, substantially, equivalents. The defendantsuse'll'support filled with rows of uniformsq'ullre holes. The court is not prepared to say that thewaUs between these holes are ribs; The ordinary meaning of the word'w9uld have to be strained distorted to make, it cover the "Pai"titions or 8epta between the cavities," and especially so in an art where a :restricted meaning is required. A careful reading oNhe specification confirms the impression that the patentee intended to use the word,not as now asserted, but in itsortlinal''y sense, as synonymous with projections or ridges. He intended to 'draw, and does dl'aw;8 .sharp distinctiori between plates with ribs and those withcells,cavitiesand perforations., Claims 9 and 12 ate clearly void for want of patentable nov.elty. Their only distinguishing feature is cast lead. The complainant, if its position is correctly understood, does not assert that there is anything patentable in casting lead. It is not alleged that the eleventh .claim, which i
BRUSH ELECTRIC CO. V. JULIEN ELECTRIC CO.
6.93
covers the process of casting, is infringed. Not only every skilled mechanic, but every school-boy who has experimented with melted lead, who was shown a model of defendants' grid, and asked to make a series of them, would at once suggest the idea of casting them in molds. This proposition is, virtually, concl"ded by the complainant's counsel, for l in speaking of the advantages of casting over rolling or pressing, they say: "If this latter WAre the only advantage and the only mode of operation and result then the invention would be old in any casting of a complex form, and that is the plane on which defendants deal with this inTention; but the true understanding of the invention shows that it hall its birth in the needs of secondary batteries that operate by expansion and contraotion of a perma/lent coating which must not be allowed to get away from its support, and that its peculiar. mode of operationand:ldvantages exist only in such a battery." What, then, is the novelty upon which these claims are sought to be sustained?' It would seem' to rest solely on the' theory that east' lead produces better results ina secondary battery than rolled or pressed, lead. A patent cannot stand, for a moment, upon ground so narrow. Lead ,plates were old in'secondary batteries, cast lead, ,plates were old in primary batteries., The-art of casting was old and free to alL The form of the plates desired would suggest casting them to the skilled artisan. 'this right being clear it is idle to assert that one may east his plates but shall not be permitted to use them after they are east. It being quite impossible· to pour melted lead into molds withontproduoing cast lead theqllestionarises: Can the person who first uses this obvious process in making: secondary battery plates not only obtain a monopoly of the product but of the process as well? ,Manifestly not I It is nQt even the .substitution of one known material for· another. It is the substitution' form for another well-known, form of the same material. In HotchkUs v. Greenwood, 11 How. 248. the court say: '''l'heimprovement consists in the slolperiorityof the material, arid which not new, over that previously employed in making But. this, of never be the subject of a patent. No Qne will pretend that ama-chine, made, in whole or in part, of materials better adapted to .the.purpose for which it is used than the materials of Which the old one is constructed, and for that reason better and cheaper, can be distinguished from the old one, .{Jr, in the sense of the patent law, can entitle the manufacturer to So patent. The difference is formal, and destItute of ingenUity or invention. It may afford, evidence of jUdgment and skHl in the selection audadaptation 'of the ma:terials in the manufacture of the instrument for the purposes intended, but nothing more." . See, also, Bushing Co. v. Doe7,ger, 23 Blatchf. 167, 23 Fed. Rep. 191, .and cases cited. . . . With every disposition to act with liberality towards those who, with. undoubted genius and untiring research, are developing this recently. discoteredml)]e of industry, the court canno,t ignore the repeattld and uniformuttel'ances of the supreme court upon this subject. In audition' totheJamiliar and oft-quoted authorities, see the' following, decided at thepreseQt term: Burt v. Et:ory, 10 Sup. Ct. Rep. 894, (February 8, 1890j) Hill v. Wooster, ld. 228, (January 13, 1890;) Day v; Railway Co:, 132 "U. S. 98, 10 Sup. Ct. Rep. :l1;.:Watson.v. Ra,uwayCo";,L82 U. Sd61,J.()
694' Sup. Ct.Rep.45; Mn:rcharid v.: Emken, 132 U.S. 195, 10 Sup. Ct. Rep. 65; Roye:rv.p,oth, 132U. S.201,10 Sup. Ot. Rep. 58. ., Claim ;14 may be construed asoovering a combination,.one element of which , the slots, etc. , is new and; useful, and is' not:covereu by the·' other claims.. The original specificlition and drawings, filed june 9, 1881, describe and show grooved, honey-combed and slottedphHes. Indeed. the drawings, for the .absence of which Case I is criticised, were filed at the outset inCase C. Of Fig, 4, showing the all)tted plate, the specificatioI)"Heretile,suPP<ll·tingplate between the ribs is removed, tile latter being by the,heavier side or eud ribs, and otherintermedii:ate transverse ribs, if, DeceSlll\ry.· This modification ill ,in for,m somewhat like an ordinary, window-blind, with the slats open." , ., ',' " , ' ',:); \ 'f,'
Thisean mean nothingels& except that thelie were openings extending ebtirely through the plate. 'The 'specification as originally filed is cient, therefore, to Regarding the infringementofthis claim and claim 7 there OOn be no doubt and the same is true oHheelaims;in controversy, of Cnse 1. The point; is suggested that the ,defendant Bracken is not :proved to· be an infringe-r, buttbestipulation.signedJbythe solicitors makes no distinction . l: between the ,defendants. The questions arising on/the expiration .of the Italian patent are of & serious character,and, in,view of: the: elaborate attention giVfm to other defenses, would seem to deman>teatercon!lideration in the testimony anGlt in the briefs. The in the'record, but 110 word of explanation, so far as can, be. discoverdd;has been ·()ffered on the part of the defendants. The onlytestimoay explanatory: of the patent is the clear and positive statementiof the bbmplainant's expert, that it describes aJ.1d. claimll,iQ:ventions entirely those of the pateqts ·in conttoversy ·. :' :Thepatent contains 1ii.iV8'divisions and twenty-twa claims. It knoWledge tl:f perceive that some of these are wholly dissimUarto the,inventions in Btiit.' .. Others would seem to be dangerof the those of the. Italian, ously patimt t() ,J;Uost in pointll.rehut little disa.ld ill some instances: ,are Dot even, alluded to in the defendants' brief. For example, take a portioni o£ Division D and its corresponding claims."The Italian patent 80YS: "To form an element having a core or body coatpd with the mass described, I,tl'ke a piece!of lead, or of otbef sUbstancesuitaWe for the purpose, and, if necessary, ronglltlD or sCllre its surface, or pierce it wlth numerous perf()rations. to insure !;l' Ilr.madhesioD:of tJle Which Is to the, activ,ecoilting.' I # thetinely o*idiz\!d metilllic lead and lead-oxide pl;1rticl p s,) and 8Pf1iy heavy The result 'is that the finely divided' are not omy'pl'essl'd i intoa.ftrm andstfongoly coherent mass, but the mass IsaI80" firmly :united 1;0 l!hll:Supportingcore jjr;body. This core maybe of lead. or'it II!sycol'\sist of as gold or pJatinilm. or any alloy of tilese metals with lead." .
(Claim l'f <>I the: Italian patent- iSBS follows:
BRUSH ,ltLEqTRI9CO.t1. JULIEN ELE<;;TRIC CO.
695
process. for making secondary battery elements; from whi.ch saidelemehts can be constructed;) said process in covering one or more draIl of the. surfaces bfa suitable m.etaIlicand electro-conductingcofe 01' body; either with superfl:cililly oxidized particles of lead; or with a mixtilte of particles lof pure lead and lead oxide, and afterwards applying pressure suf· ficient boLhtounite saidpalticlesor mixture into;-acompactand firmlyc6her,ent. mass, 'and to unite the mass to the core or body, as Het forth in DiVision D." ; !. : :Bearing 'in mind the fact that m'etallic lead and lead oxide are absorptive'or active material, fl. Comparison with some of the claims in cQntroversy will certainly show' marked features 6f similarity. Claim" to .of CasE) T'is'as follows: "Iil ofmakihg asecoodary batterf plate or ,element, combining by means of pressure anabSorplliv.esubstance and suitable material to form a Supporti,therefor, substantially 8S set forth." 'To the uniriitlated ihvouui seem that the('leclaimsare for , tions.Would the fQrnlUla of the Italian patent infringe the pressure claims in Is ,not the, . 'of b1 ve material.uwn 'thesPPP?Jt. ",l5et free" bY,theeXpIratlOn of the ItalIan patent? Itlstrue that PlVlslOn . 'D', of tb'e ltalill.npatent also the process of uniting the absorptive or firmly. cohet;eiit l)ody or QlaSs without Ii but to 'seem to 'be reason'ably clear tliat when the says, Rl1.lntbede'scriptidn, tj,uoted,. that takes a sheet of lead, pi'erees it with to.insure a the lllll,ss.,»,:bich is t() the'actlve'coatmg, support WIth the mIXture of metalh.c lel1d and pressure, masS II! n()t only pressed. t9gether .' but cere, he is the process' 18 claIm Other claIms of the Italian patent are as follows: . "Ol)..A..s a· manufacture,. a , mixture. or 'association Of of. lead, ,united P1. pressure in DivisionD." "(14) into a coherent and firm body, substantially as set, For use in 'an element ofaJsecondary battery, a metallic core or body. to one or more sides of which mass or substance, primarily consisting of metaHjcleadand oXide,of.lead, united by.pl'essures() as to be strong 'and firmly substantially as set forth in D. (15) A secondary battery ,element, consi!!ting llf a metallic core, baving to it a coatingpritilarily consisti ng 'of .mi1Ced .lead a'nd, oxide of lead firmly, u by pressure' a strong and' coherent mass, substantially as set forth in Di Vision D.. (16) A: secondary battery element, consisting of the combination witb.a me'tanic supporting core or body, ofRcoating attached or united to .said core; coating pr,imarily con sistingof metallic ]('ad, and llead. OXide in an intimately commingled state, united by prlll!B\lre a strong Bnd firmly l;ll'lt .forth in D." coheren,t ,L ',.
lw
<,'
,"
,'".j
'.:
,.,'
; It"will btN>bserved thattbe first of .clfihtt 11, co.vera only lead . and oxide of mixed and united by into a' coherellt mass 'lo.r'use'asltn or ,a coating. The pl\\te wl1ntin,g' .tpis
as
·' 696 FEDERAL R'EPORTER,
core atill body," in all the others. Compare these claims with the pressure claiiilsof the patents in suit,but also compare thllm-and partic: ularly claims 12 ,and 13 of Case 1.. are as follows: "( 12) Abs9rptlve material for ilse, in secondary batteries formed into a coherent IDl\s,B,bypressure. substantially as set forth. (13) For USB in sBcondary granular, spongy, or equivalent lead formed into a coherent mass by pressure, substantially as set forth." wh",re is the lack of idenThe language is ,different but, in tity? ,But all ,these arequestiqnswhich the court, in view of th,e actionof the American ,patent officials, in distinguishing between the inventions covered by the Italian pateQtan.d those covered by the suit, and in, view:, qf ,the opinion of the expert, shouldh esi14,te .long before, answering in theaffirmative. Mr. Weston saysof,'IDivision D" of the Italian patent: "It is for.,an i?lproved form of elepJrode to the formation by electrical disintegration the Plante, :inetppd, or by the peinventedl)y Mr. Brush and culilir meth,04 of described iriDiHsion A." It ahoUld'be, rememberEldthat we are dealof the science, of ing 'which is stillW'its infancy, of. which are but little un'd,erstood., even. ,bythose who its study life-work. For ,,()1'le who a casualanq lIUperfiClal knowledge \0 place a construe'tion upon a patent which those who,81'e educated in this and which'const&ntly terms of art, in'oppositiori'td ihe.. the oi:l1y electrician upon the sub'ject" would 'be' when such a .construction 'destroy rights' and of great ,value. In vel'YJJ}/lny of the patent causes which bome before the '. where the is so simple that any man of oidinarycapac;:itycan understand it; the presence of an expert is wholly unnecessary, but ",hen the invention relates to a subject wpere even the, pioneers are'still groping in shadows, ,the court needs 'the instruction of those most competent to advise,and without such as,sistanceflh(:>Uld proceed with the utD;lost caution. The law does not favor forfeitutes. 'A, patent spouJd never be because of . the expiration, ofa, foreign patent if there. is doubt, about the inventions "being the same., The, is upon the: defendants' and the doubt should be resolved in favor of the patent. After such study as I have ,: been aole to gi Va the subject! aill not satisfied that the Italian patent is forthe same invention as those in'cpntroversy. lOs SUfficient, for prespurposes, to state that of the court is in doubt upon the ,question. Thelanguage orJ BRADJ,EY in the case of Bischoff v. Wethi,ma, 9 Wal1.8l:2 l where apatent'wasintroduced,8s here, without ex,planation,seems p'!trtitnl1arlyapplicable: " .. " "The specifications of patents foHllventions areahcuments of apecriiiar l,ldpd.· '.rhey p,rofe.:to mechanisms and complicated machinery. chern,JC\il compositions and otber. prodll:Cts,' whicllhave their eXlst!!nce in pais, outside ofthe documents themselves; and which are commonly by terms of the art or, mysterfto which they respectively belong, 'and these descriptions and terms of art often require peculiar knowledge and
;,ent
BRUSH ELEtTBIC CO. t;. JULIEN ELECTRIC CO.
697
education to understand them aright; and slight verbal variations, scarcely noticeable to a common reader, would be detected by an expert in the art. as indicating an important variation inthe invention. Indeed, the whole sub. ject-matter of a patent iaan. embodied conception outside of the patent itself, which, to the mind of those expert in the art stands out in clear and distinct relief, whilst it is often unperceived, or but dimly perceived by the uninitiated. This outward embodiment of the terms contained in the patent is the thing invented, and is to be properly sought, like the explanation of all latent ambigUities arising from the description of external things, by evidence in pais:"
It was, therefore, decided that the circuit court was right in charging the jury that there was not on the face of the respective patents such an identity as authorized the court to pronounce that they were for one and the same invention. No. 260,654 is not, in any event, affected by the Italian patent. The former bears date July 4, 1882, the latter August 8, 1882, and it was notapphed for till July 28, 1882. It follows that upon filing a disclaimer of the invalid claims the complainant is entitled to a qecree in accordance with this opinion, but without costs. In connection with this decision the following statement should, I think be made: A&uit similar to this is pending against the Electrical Accumulator Company. Some time after the oral argument in. this cause. was concluded the for that company Mter due notice to all parties interested called the attention of the court to the following facts: On thl! 28th of March, 1;0 days after the decision ,on the Faure patEmt was filed,.the president and, secretary of the Julien Company, without the knowledge or consent of counsel, obtained from, the complainant an option to. take an exclusive license under the patents In suit provided they were sustained. III view of these facts the court was asked either to refuse to <iecide the cause altogether or to postpone the decision untjl the cause against the Accumulator Company is ready for argument. The court urg:ed upon counsel the importance of having the issues upon in a. controversy which is, in all respects, genuine and earnest, and expressed his own disinclination to decide an action where a suspicion to the contrary might exist. Several plans were suggested,but none upon which counsel could agree. As a. decision in the other cause will not he reached for a year and as the option alluded to is not regarded as a settlement of this cause, the Qonclusion has been reached that justice to the parties demands that a decision should be made at this time. I regret having to inflict so long an opinion upon litigants and counsel, but the examination and stud;)" of a record and briefs aggregating 2,500 printed pages has made it impossible to devote the n(lCeSsary time to review and condensation.
J'EDERAL' REPOR'l'ERr
i , . \if
Or.nsv. BtiOWN 'ei al. i'."
Pl.um IiWBNTIONS-ANTIOIPATldN"':'HoBS. LetWr8:!Paient No. 148 973, issued March, ,24,1874" to Johnl}. ;Qlds, :(01' ImproveU/.entiq hUQiIi,i (lOJ)slstlng ia combinIng with a wooden hub one or more, solid seamless metaJ.!.ic,) \!anQs, whioh pccupy annu\ar gtooves in its peripbe!'Y.l Is void for want of novetty' baving' \:leen anticIpated bY'letters patent No. 128,Mfl;Issued JUly 2, p.,.hine.,as Jones.,' bY. letters p.ate.ntN.0.· 14.9,625, issued April 14; 1.874., to Johnson V. by letters patent No. 14l1.251!1 ts.sued January 6,1874, to C. H. Guard, by letters patent No; 87,225,issued JJecember 28; 1862, to J. W.GG.1'dner, and by uses of the patented devio,," 9.s.um::r;ll;;XTBNT Oll CLA.m..
:rem
(Ctrcuit Oourt, S. D. OMo. 'March 22,1890.r . :, ;. "
" " Up.der Rev. St. U. S. § 4888, which requIres an applicant for to "point out . 'and distihctly claim the par.t, :improvement; 'or, combinatIon whIch he claIms as his claIm of ,aIq.patent which is ,for "a wooden hub by one or more .seamless IttlltalUc bands, whIch' occupy. annular grooves in the perlphtlryof:thEl hUb" substantia1ly 88 described." beIng explicit, "ltered,o:r enlarge4 by the specification. or ptherwis8.
_
. . . , . .
InEquity. BilIto of a patent. B. F. Thurston and Arthur Stem, for complainant. , ParkirllJO'fl.cllr' Parkinson, for defendants. k , .""f.':":',. "'f ,I ',':';"
'SAGlll,"t}"The cotiJ.plail1afit'spateht,No. 148,9'i'3td8:ted March 24, 187\1,' applibationfiled March 4, 1874, is for an improvement in hubs but one 'claim', which is as follows: "A wooden more seattlless metallicbands, which occupy: annular 'grooves in,ttheperip'hery oHne bub, substltntially:as described. II' tn' the domplainant states that his invention Jconsists in combining,mth,a wooden hub one or more solid seamless metallic strengthening Tlari:ds, which occupy annular grooves in its periphery. lIe, disclaims. tileans for' setting the bands, and declares that they tmttionof which it is iriteilded shall be covered by thatthe'operation, as well as the means employed,are,1.Q ,constitute, the subject of separate· applications for letters patent:": ,Tb.'especification sets 'forth that the annular grooves may be cut qytiirning, at any desired poil'ltbetween the mortise line of tbe hub and jtsel1ds;. and that their depth and width may be varied. The diinensibns' ofihe tland sho.uld be such as to fill the groove, and make It finish flush surface of the hub. The bands ltre preferably pliedwben cold,' 'and may 'be composed of wrought-iron or steel, or of cast-iron or r()l1ed bra);s, or' of malleable iron, and ofany required thickness orwidthj but it is important that thernetal employed'possess fair' ductile propertie,s, and be ofSuch a character as not to bel1nduly or injuriously weakened inits'tehSile capacity by changes necessarily resulting from the process of setting the bands iIfthegrooves. In" the process of set-' ting, the hub is to pass snugly over the outer shoulder of the groove, and abut with more or less bearing against the inner shoulder. The hub, with the band, is then placed endwise into a solid female die, which has an interior surface cQrresponding at one point, as nearly as it may be practicable to make it, with the exterior surface of that portion of the
no