EDISON ELEe. LIGHTe<>. t1. ELECTRIQ ENGINEERING"' SUPPLY 00.
401
lies so much in this case, and an elastic ring, which answers for the Kraetzer eyelet, if the latter is to be so broadly construed as the appellee claims. Petition for rehearing denied. Mandate according to the order entered October 27,1893. may issue forthwith.
EDISON ELECTRIC LIGHT CO. v. ELECTRIC ENGINEERING SUPPLY CO. (Circuit Court, N. D. New York. March 21, 1894.) No. 5,949.
1.
PA'I'IjlNTs--,-LIMITATION BY FOREIGN PATENT.
When. for the purpose of limiting the duration ot an American patent, defendant Introduces a foreign patent fora shorter term: to the same inventor, he Is not bound to show further that the fore11Ol patent has not been especially when thl're is no proof that the foreign law authorizes extensions. Bate Refrigerating Co. v. Hammond Co., 9 SuP. Ot:. 129. U. S. 151, explained. The Edi.son patent No. 2Ii5.:n 1. fotl an electric lamp and holder for the same, shows patentable invention as to claims 2 and 8, which l·elate especially to tb,e $OCket for holding tb,e lamp.
J.
.
SAME-INVENTION-ELECTRIC LAMP HOLDERS.
S.
SAME.
The. Jo/lnson patent, No. 251,596, for an improvement in sockets or holders for electric lamps, Is void for want of invention as to claim 5, which Is· for an exterior metal covering protecting the interior portions of the socket.
L
The Berg-cann patent, No. 257.277, for an Improvement in electric lamp sockets, shows invention as to claim 2. which covers a form of construction In Which. the contacts are compressed, Instead of drawn apart, while screwing the lamp Into the socket.
Bill by the Edison Electric Light Company against the Electric Engi:J.eering & Supply Company for infringement of patents. On final heal"i.ng. C. E. Mitchell and Richard N. Dyer,for complainant. Alfred Wilkinson, for defendant. COXE, District Judge. This 8uit is based upon five patents owned by.the complainant. All of tht:'m relate to improvements in for incandescent electric lamps. They are 1'0. 251,596, granted December 27, 1881, to Edward H. Johnson, 1'0. 257,277, granted May 2, 1882, to Bergmann, No. 2U5,311, granted October 3, 1882, to Thomas A. Edison, No. 2B3,552, granted February 12, 1884, to Sigmund Bergmann, and No. 2B8,fi58, granted May 13, 1884, to Sigmund Bergmann. The last of these patents, No. 298,658, was, at the argument, withdrawn from the consideration of the court. Regarding No. 293,552 it is admitted that at one time, tbree years or more ago, the defendant made sockets which infringed. As I understand the situation, therefore, there is no objection to a decree for an injunction and an account, so far a8 this patent is concerned. It remains to consider the other three. v.60F.no.3-:W
,: :hI. :No.!266,3!1.l.·" ' . . : I, ,1"" , the to; Tholna:$°llEdisl)D Wa£!: after it,was,in fact, applied. for Eebruary 5, 1S80! nefore either ().f It the ,pth,lgipal Jlatent in controversy and will, therefore, oE!coriSideredlll'"st.The patent is for a new and useful elt;!ctric lamp and holder for the same. In the specification the inventor says: ','-" '.:'
"In eystenihfelelitrfe'llghtlng forordinllry and domestic uses, it seems essential that a, lamp' lIboilld be devised complete in itself, so. that it a,!leparll.te a",tlcle ready, fQ,r attl/-chment to a smtable sUPVdrt; and Wfili'condl1ctors so arranged that When the lamp Is placed In position the circuit connections ,are completed without further adjustment, and the holder or socket for receiving .the lamp Should be arranged to subserve this PllWose, this that -theta may be' no' dUtlculty enooun· . . onWs'1nvention Is to atta.1n this;' aud to that end It fii ait,electrICla¢i)JUI.' 11, separate article '1;>e, placed upont!or or removetl' from a suitable holder, 'aqd ,in a socket or holder as a separate article adapted to recelveimd s'Q.pport upon or within it an elec1l,ic lamp, and III the ccmbh,:uitiOll ,of these two 'separate articles -and the, electricc1rcult, tAd, In. other more ps:rltilfularly hereinafter descrl1?edjindcl¥med." . ' , . . A is the socket or hOldpr for receiving the lamp;" It Is 'made Of lfultable Insulating materiaJ, shaped and ornamented as may .be d'*llred, receiving ,and support;. lng the:JMltiOf the elect:l'iil1lamp and fashioned ·at one elld: so all' to be fastened drawinto a.gallilftxt1lre or other,sultable support: As Bhowl1 f1Ji the ings, out fl'l)ID tile topwitlFll. 'll'erew-thrM!'ied aperture In the base, by which it Is attached to the bracket or chllndl'ilier arm, I." disabli!(L
The then'desclibes iri' :detail the construction of the socket. :. TlJeclaims involved are' the se¢ond and, third. Theyare as follows: "(2) A SOCket for an electric lamp, ada.pted to be placed upon a gas pipe or 'Other '., suppotot, and provided with contact plates forming the terminals of an electric circuit, and arranged substantially as set forth. ' "(3) A socket f()r an adapteq. to be placed upon a gas pipe or other suitable support; 'and provided with contact plates formIng the termhl'als of an electric circuit, and also 'pllOvided with a circuit controller inserted in one branch of the circuit for controlling the circuit SUbstantially as set ::",.;·I'j' '. '. ,.' , , ' : ',F'.,:
It will be 'observed that the second claim is the same as the first with't;4e exception the second has an additional element, viz., the controller. The defenses relied. On are, first, that the with a prior Russian patent in December, 1891, and,' second,that the patent is void for lack of Infringement is not disputed.
" , T h e RuS'Sian Patent. The ansWer:ave1'9 that the Edison patent has expired under -the provisions'of section 4887 'of the ReVised .Statutes. 'The preamble to the specification the in"\Tention was patented "in Russia December 14, 1881.'"''A!. copy of ithe Russian patent was offered in evidence by the defendant and the complainant admits it to
EDISON ELEC. LIGHT. CO. '11. ELECTRIC ENGINEERING & SUPPLY CO.
403
be a correct copy of the Edison patent of De.cember 14:, 1881. This patent recites that a petition was presented "for granting to the foreigner, Thomas Alva· Edison, of Menlo Park, in the state of New Jersey, United States of America, a ten years' patent for improvements iil the arrangement and manufacture of electric lamps." It concludes with the statement that the government "gives to the foreigner, Thomas Alva Edison, the present patent of a ten years' from this date, exclusive right to use, sell," etc., the invention. The defendant also introduced a certificate from the Russian department of trade and manufacture that the patent expired or became "exhausted" in December, 1891. This certificate is criticised by the complainant as not being sufficiently authenticated. I am inclined to think that the absence of a seal and the signature of a superior officer of the Russian government renders the certificate inadmissible. Church v. Hubbart, 2 Cranch, 187. . Does the absence of the certificate materially change the situation? It is conceded that a prior patent was granted in Russia, December 14:, 1881. As the court recollects the discussion at the ,final hearing it was admitted that the Russian patent was for the same invention as the patent in suit. It certainly seems to be for the same invention and no contention to the contrary is found in the complainant's briefs. It appears on the face of the Russian patent that Mr. Edison, through his agents, asked for and received a 10 years' patent. Unquestionably then the proof establishes the existence of a prior Russian patent, for the same invention, granted for a term of 10 years from December 14, 1881. But the complainant contends that this is not enough; that the defendant must go further and prove that the patent has not been extended. The case of Bate Refrigerating Co. v. Hammond Co., 129 U. S. 151, 9 Sup. Ct. 225, is cited as authority for this proposition. The decision in the Refrigerating Case did not turn upon a question of onus probandi; it was decided upon stipulated facts. It appeared affirmatively that pursuant to the laws of Canada, a Canadian patent originally for 5 years had been extended 10 years. The court held that under section 4887 the patent did not expire till the end of the 15-years' term. In other words, the court decided that it would not hold a patent to be dead when the affirmative proof showed it to be alive and operative. Surely this is not an authority for the proposition, that a presumption exists that a patent, limited to 10 years on its face, has been extended beyond that period. What is there upon which to base such a presumption? If an extension were, in fact, proved the law for it might be presumed. If a law permitting extensions were proved the fact might possibly, in some instances, be presumed. But how can the court draw an inference where there is neither fact nor law? The case of Pohl v. Brewing Co., 134: U. S. 381, 10 Sup. Ot. 577, appears to sustain the proposition that the foreign patent itself is proof of the duration of its term. At page 382, 134 U. S., and page 577, 10 Sup. Ct., the court says:
404 "It'apl:ll!ars; by translatiOns'lntO EnglIsh of the 'German and P';roo.ohpatents, that the: German patent, began to run september, 6, '187'7, and Its, dUliatlon was"unj:Jl 189V'
Again' On page 383, 134 cUI S., and page 577, 10 Stip;Ct.: ' Gl;!rfrlan patent on 'ltsface appears to bave been granted for a term extendIng from september 6, 1877, to December 12, 1891. * * * It the United States patent does 'not expire until' the end of the term expressed on faee of that one of the two patents, German and French, which has the sh9rtest term so expressed on its face, jt does not expire until the of the terIP, so expressed on, the face of the German patent, namely, December 12; 1891." , A foreign patent clearly and unmistakably shows on its face 8., 4eftnite term ofyero:s, it ",ould seem, in the absence of proof to the,c9ptrary, that ,the shown must be accepted by the court as limiting the life ofthe patent. In the present case there is an entire absence of 'proof on which to iJ;lference that, 10-yeal'$' term was e;x:tended. It was either 10 was patent at an., If the patent was an term it was for the cOJ,llplainant to showlt."., Th.e, defendant'spropf of a patent properly before Until the contrary it must be presumed that tHe patent was, grantedpuI'Suantto l{ussian law for 10 yearj.,;' The court cannot ignore or;reject this proof upon a mere that it may,be erroneous. I conclude, therefore, $.at the ,Edison patent expired i:n, December, 1891. The court, however, .Msjurisdiction, as the suit was begun some two months before tile 'patent expired. . '. ' . It isc<m'tended by the defendant that in construing claims 2 and 3 of tlte:E;dis()n patent the court should confine itself strictly and closely to. the socket described. therein, and by tbe complainant that the courtsp,ouldimport into the socket all the virt:ues and ingenuity of Mr. Edis.()n's incomparable system of electric lighting. Neithe!.' view is correct. The claims should not be defeated because other lamps have been supported in sockets, or upheld, because Mr. Edison has lightedup the world.and illuminated electrical science with his Aladdin lamp. It is not necessary to consider his other patents. The one in suit 'furnishes all the data necessary. It is intended to cover an electric lamp and the socketfor the same. The.socket and the lamp form one complete structure; neither is of any value without the other. In construing the claims the c()mpleted lamp should be considered. It would be a most narrow and illiberal construction to leave out of view the lamp and the. particular kind of lamp which the inventor described as hseparablefrom the socket. , It is plain from the portions of' the specification quoted above that the inventor's main idea was to reduce the INnp proper to the minimum of cheapness and ,sinipIfcity and place all the durable and expensive mechanism in the s06ketso that the ,socket would outlast a great number of lamps 'Which necessarily b'ecome broken or W()rn out and are cast aside. In short, the socketof the claims is the socket of the specification and drawings. It is a socket, small, compact and symmetrical in form. Although mere matters of shape are, probably, im-
EDISON ELEC. LIGH,T CO. fl. ELECTRIC ENGINEERING &. SUPPLY CO.
405
material it is a noticeable fact that all subseqnent sockets have in general appearance adhered very to the socket of the patent. It is made of insulating material 'and carries the two electrically segregated contact plates, the circuit controller and the leading in wires, so arranged that the most inexperienced person may light the lamp by merely inserting its neck in the socket. Finally, it must be so constructed that it can be fastened to a gas fixture or other suitable support, the lamp taking the place of the gas jet. The prior art does not disclose a socket which anticipates such a construction. ]\,fany of its separate features are found there, but not the completed structure organized as described. I cannot doubt that the production of such a structure involved invention, of a very inferior order to some of the other inventions of Mr. Edison, of course, but still sufficient to support a patent. To discuss the prior art in detail would unduly protract this decision. The best reference offered by the defendant is admitted on all sides to be the EngliJSh patent granted to Powell in 1874. It relates to arc and not incandescent lamps, the socket has but one contact plate and it is not insulated from the support. 'Mechanically it would be iD;lPossible to substitute this socket for the Edison socket, but if the mechanical changes were made it would be electrically impracticable forr the reason that connecting it with a gas fixtnre or other conducting support would instantly ground the circuit. The patent to Jablochkoff shows adjustable metal jaws, but it can hardly be said to desoribe a socket at all. Manifestly it shows nothing that could take the place of the Edison socket. The other alleged anticipating structures are still further removed from the patent. No one of them anticipates and it is thought that all of them together would not have suggested the Edison socket to the skilled mechanic in the winter of 1879 and 1880, which is the time when the test should be applied. -If the mechanic had all these before him, plus the Edison lamp fully organized and ready for insertion, he might be able to devise a suitable socket to hold the lamp, but this was not the problem with which Edison had to deal. The socket and the lamp form one structure and came into being at the same as the result of a high order of inventive genius. The argument of the learned counsel forr the defendant shows marked ingenuity and research, but for the reasons outlined above it is thought that the claims must be sustained. No. 251,596. The patent to Edward H. Johnson is for an improvement in sockets or holders for electric lamps. The inventor says: "The object of my invention is to construct a socket or holder for incandescent electric lamps in which the circuit connections shall be completed by the placing of the lamp in the socket, subject, however, to such a circuit controller as shall instantaneously and efl'ectually make or break the circuit and light or extinguish the lamp. * * * The socket is made In two parts-an upper portion, made of wood or other insulating material hollowed out to receive the neck of the lamp, and containing on its interior surface two metal bands corresponding to those of the lamp neck, and so connected with the conductors that when the lamp is screwed into the socket electrical ·connection is immediately completed to the lamp; and a lower part, consisting
406
Jl'EDll:RAI.RE:PORTltR,
vol. '60.,
wood cet Into 'a' meta1cap '!Ulvlng aft the bOttom ascre'w-threaded which the socket is attl1<:bfld to other fixture, and p;ass the conductors, which terrpinate in metal plates s,et Into therWOdd thlspart the *'. A I;Uetalcovering may surround the'upper part of the sockettn;orderthat the whole may present lI. unl· forat' au" ,ornamental appearance." :
of
portloIlS, provided with clr'CUit connecti()nB, of exteriOl' metal portions, forming a QO'Hl'lng therefor,:s1ibstantially as set forth."
The'iJith claim only is involved. It is as follows: "(5) In/a. socket for electric lamps tbecombination, with Interior insulating ,is lack of
It will be obuse of the metal covering op,tpr there can ,be, no C()verihg, with upper part omitted. He!lfLys;""A metal covering ml:J.Y the upper part of the ,only virtue ,he, attributes, to thiscQvering is that it theSQCket, a, feature conceded to be immaterial. In the submitted, theleamed counsel for the complain. from the. Edisotl specification, ",!t is shaped 3;nd ornaJ!lei:ited, as may be deSIred.' *, * * Mr. EdIson's conceptIOn was that:qlere shape and ornamentation were noth· is "nothing" in the, upper part of this metal box it ing!' " is not see howlt'involved to place it upon a similar part and thus form a ,'covering. The e:x:perts seem to agree'that the claiI#in question, for an exterior metal covering Ahe fnte'riorportions of, the socket: In other words, that placed Edison's socket in a metal shell and the claim covers 'that shell. If 'all the features described in the specification 'and cQvered by' the ", claims could be imported into the fifth claim it might be sustained, but the languag!,! of the claim witll" thespedfication and the other claims itself , seems preclude such a' construction., If the claim relates, as I think it'd0eS; to, the llarts of the specification in which the patentee says, "A metal' covering, may surrouhd the upper part of the socket in order whole lllay present a uniform and ornamental appearance," and, "The partsE, 'a, meeting and producing a continuo ous metal exterior for the socket," I think it must be held invalid for lack of patentability. 'One who covered the interior insulating portions of- an, electric light socket with such a case would infringe the claim without reference to the manner in whioh the terminals of the wires were connected to the binding posts. To provide such a case in view of all the prior knowledge on the subject did not in· volve invention. The socket looked better, but the case added no new function; the old parts operafed in the old way. Mr. Johnson has very likely made an ingenious and patentable improvement, but the' dUflcWty ,is theclaiin in controversy is not aptly worded to cover such improvement. No. 257,277. The patent to 13igmundBergmann is ,also for an improvement in electric He says'in his specification :
served
"The object I, have in view '1s, to produce a socketi for Incandesing electric lamps whichJWl1l' have the ·electric terminals or 'contacts so constructed and
EDISON ELEC. LIGHT
CO. V'Ej;.ECmlC
ENGINEERING & SUPPLY CO.
407.
arranged that the terminals ,can be used ,on the the lampe, which" when it is screwed from their position, will subject the base to into the socket, instead of to tension, thns permitting the use of a molded basewithont danger of cracking between the terminals; The invention' is applicable to sockets of all kinds used in systems of electric lighting, whether for lampS or for simple pIngs, for connections or for 'safety-catch' plugs, such as are 'used in the 'cut-outs' OU blocks for branching circuits. The invention consists mainly in providing a socket with terminals or contacts, one of which is a horizontal metal ring located on its side walls, which ring is screw-threaded or otherwise formed to engage an oppositely constructed ring on the base or plug, and the other of which is a plate, spring, or equivaient the base or plug having a metal device, located in the bottom of the tip, which is forced down on this plate by the engagement of the rings; and, further, in peculiar details of construction, all as more tully hereinafter explained, and pointed out by the claims."
''l'he second claim only is involved.
It is as follows:
"(2) In an electric socket, the combination, with the body of insulating material, of a plate in the bottom of the socket, and a horizontal screw ring located between the bottom plate and the mouth of the socket, said plate and ring engaging opposite parts on an entering base or plug, and serving to compress the base or plag between the terminals @.rried by it, substan' tially as set forth."
The defense is that the patent is void for lack of patentability. notseriou&ly disputed. This claim is for minor details of construction and relates to differences in the arrangement and shape of the terminals, its object being to screw the lamp firmly in the socket without cracking or breaking the plaster of Paris or other insulating material by which the lamp terminals are fastened to the neck of the lamp. The scope of the invention is tersely explained by Mr. Bergmann himself, who was called as a witness for the defendant. He says in substance: "I remember that before February, 1882, the plug and terminals of the lamp were made quite different, instead of compressing the contacts when screwing the lamp inte> the socket you pulled the terminals apart in the old style. As this was a serious matter for the safety plug as well as for the lamp-and the material which was applied generally at that time was plaster -broke the plug or the lamp at its terminals very often, and made the same useless, I went to work and just reversed what had been done before, viz., compressing the plaster or insulating material, and I remember being glad at having overcome this difficulty so easily, and I went up and saw Mr. Edison, and he at once sent word to the manager of the lamp factory, to stop making the old-style lamp bases and make them the way we have made the safety plug, viz., compressing the plaster when screwing the lamp in, instead of pulling it apart."
It is unnecessary to discuss the prior art. The Powell patent does not anticipate for the same reasons that it does not anticipate the Edison patent. The other references are no better and, in fact, not so good. None of them shows the combination in controversy. I am of the opinion, therefore, that the invention, though a narrow one, is sufficient to sustain the claim. The questions arising under section 4900 of the Revised Statutes may become important in view of the expiration of the Edison patent. It is enough now to say that the defendant's counsel did not a1J.uM to these questions upon the argument and they are not disQussed in his brief. Should it become necessary they can be pre-
408
n:DlIlLU. Bll:POBTEB,
vol 60.
sented hereafter. The attention of the counsel is' called to the recent Dunlap v. S,chofteld,14' aup. Ot. 576. It folloW'$ .that the complainant is entitled toa decree for an accounting upon claims 2 and 3 of No. 265,311, and for an injnnction and anlilte9unting upon claim 2 257,277, and claims 4: and 6 of No. 293,552, but without costs.
TATUM et aL v. EBY. , '
(Ol1'cuIt Oourt, N.· D.' California. January 29, 1894." L PATENTS FOR INvENTIONS-GANG EDGERS-INFRINGEMENT.
Patents Nos. 227,926 and 290,358, ,itor'gang edgers, granted to J. :A:. Robi>,hElld valid. and Infringed by defendant. Tatum v Gregory. 41 Fed. 142, 446, followed:. ' .'. ' .' . , ' ,
I.
BAME'-:PRIQR KNOWLEDGE
In plea'dlng prior knowledge and 11Se under section 4fj20, Rev. St., Il8 anticipa,tor:y a patent, 'tb,e, ()t the person!J by whom, as well, 118 , the place 'Where, the prior USe was had, must be given; and the allega,. 110n that the prior machine was built by a person named'is not an allegation ot, Ujle by "
The defense ,of prior k'noWle!;lge anti use, as an11clpatoryot a patent, , III not 'lliil.deGut,unless 'the' 'fa<!totsueh prior knowledge and use, and f : also the identity of the prior devJce,witll the patented sttuct\l:re are proved 1)eyon4 a reasonable
,
. ", '
, .'."
'.'
'In Equity. Suit by Henry L. Tat1tm and others against John D. Ebr for infringement ofletterspatent No. 290;358,: J. A. Robb, Decetnber 18, 1883, for a gang edger. Decree for complainants.': '. 'Suit on two letters patent torfmprovements In gang 4'dgers, granted to J. A. Robb, and" assigned tocompiainilIltB, numbered 221,926 and 290,358, and dated, respectivelY,May 25; 1880, and December'IS: 1883. The defendant Is the Pacific coast 'agent 'of the Stearns Manufacturing Company, ot Erie, Pa., and' sellS, on the, PaCific cOast, edgers made by the Stearns Company at Erie,Pa.The defense Interp6sed to the first pa1:entis alleged an· ticipation by '8. prior edger made and 8,oldby the said 'Steams Company, and referred to In the opinion as thE! "Stearns Edger." That edger was on sal& several years prior to the issuance of Robb's patents, but it proved unsatLsfactory, and waswlthdrawIl' from the market, the present 'infringing edA'el' being subetituted In its stead. The defense interposed to the second patent -is alleged anticipation by a pl'ior edgGr made by James Brett· and Bethun& Perry, and claimed to have been used at the Whitesboro Mlll, In county, Cal., and referred to in'" the opinion as the "Whitesboro Edger." , . . " ,". ':i
Estee & Miller, for John L. Boone, fpr respondent. . CirCUit Judge. This is,an action for; an infringement of patents for a machine called a "gall.gedger." Thes.e patents were passed on 'and, sustained pymy learned, predecessor, Judge Sawyer, in the case of TlltuUl v.Gregory,.lFed. 143, and sub!3equently by myself in thesamecase,,5:L Fed. 446. In the "'ame defenses· were made as in, this, except as to the effect,olt4e edger called the "Whitesboro As to the