130 .ELltcTRIOAL !
FEDtRAL REP01\!r1<}'Rj vol.
52·
ACqtrM:ULATOR
tt at v.
BRUSH ELEdTRIC
Co.
, {C!'rcuit Court of Appeals, Second Cil'cuit, October 4, 1892.} , ,,' , ..,'.. .;, . 21 , 8 ,(It letters pat,en t "No.,8,87,299! issued. March 2, 1886, to Charles
1;
:
. \ ;.: . , ' ,1 . I: ,i" ' ", } , ,' ':, " " ,' ' i ; PATENTBlIOR. bVEN'lIQNS-.:NQVELT}'-CONSTRUC'l,'ION 011 CLAIMS";,,SECONDARY BAT.
TERll!ie;
11'. Brushifor an improvemllilt lnsec6ndar,Y in a plate or element having' aCtive' or ab80tpti"'!l material prItnarily and meahanlcally, applied thereto or invaJ.idated.ontp.e theory tj:llu,tpe term "secoJ;1d' , ary battery" was used therein in its older and looser sense, and 'included battenes .which were sometllD.6sprimary and someliimes secondary according to the method tlI.eir ,for thedistl¥ption ,secondary batteries is definItely marked and recoglhzed, and the Brush invention was professedly an improvementitlVer:the.Plante,battel'1; which was of thepurelyseoondary ciQ08s. 2. SAllI....DBPzNI'llIONS-"PRIMARY?'.AND "SECONDARY" BATTERIES· .,4, "lIeConlillJl.¥ batteI;Y"js one which has no power of developing a our·
,
'rent, Bnd, onlfoWlien rendered so bv sendIng a current through it from an ind,6i>end,ent sour,ce, of elect,rica,l energy, while a "primary battery" is one whioh is ot the wlIh)h it is made.
Tlie Owner oHhe Faure patent in this country havmg, as the result of oertain 'litigation, flIed s.disclaimer Umiting his invention to an eleotrQde coated with a of lead, Or insoluble .substauce,.placed the suppllttlng plate in the' of a paste, pamt, or ce;ment, pr!or to m the ,batteI7 nidi,' any furt,her: d,iso,u,ssion: of· the, question of pnority of lUventlonbe, ,tweeJ1.Faure and Brush is now useless. ft,
OJ'
...''
5.
Brush'spaWnt 937,999 was not anticipated by the patent of April 8, 1868, to G. Pe,'rCivaUor".llfll(l,',OAdary pa!;tery consisting, of cells filled with coarse qonduetingpovyder. alld divided bX a porous partition; or by the patent of. Aprit 28, 'Leclanche,' 'tor a "polarlzationapparatus or electrical accumulatoll, , oon9.l8tilig' of two plate, of or unoxidi.zable metal buried in .two of powdered, a Uquid which is a good conductor, suclIaspotashwater. '1'\". .'" , Ga,'Org,e
.
"..
. .
1.
SAME-PRIORITy-PRESUMPTIONS lIROM PATBNT NUMBERS.
The Brush patents and 83,,2911 were Issu,ed On the same date, (Maroh 2,,1886;) the betwljsn themw/'S the difference between "an absorptive sUbstance; or 8nabaorptivesubstance adapted to be transformed into active mateJ:'ial," on the One hand, ,alld or material adapted, to become active, " on the other. Held that, in view of t\1e admitted fact that all distinction between the two disappears the momen tt a wttery' SO construoted is charged or discharged. there WQ08 DO. au.bstantial dilfi!rence, and the two patents were for the "" ' i i ' . ' " '.
INVENTION'
These patents were issued on the same day to the same person, and the evidence showed that it would be impossible ever to ascertain which .. official signature that rendered it a valid deed. Held. that the mere fact that one had an earlier number was no proof of priority, for it merely signified that the patent office followed the alphabetical order of Brush's contemporaneous applications, and hence that one could not be held an anticipation of the other.
S. SAME-ELECTION BY PATENTEE.
Under these circnmstanoes the owner of both patents was entitled to elect UpOIl which one he would rest his monopoly; but having elected to rely upon No. 837,. 299, it became improper that No. 337,298 should be left in a condition in which it could be assigned and sold, and a final decree should be framed, which, in connection with its finding of the validity of No. 887,299, should declare 887,298 inoperative. and prohibit its assignment or sale.
ELECTRICAL ACCUMULATOR CO. ". BRUSH ELECTRIC CO. t. SAlliE-ANTICIPATION., '.' , , , '
131
The Brush patent No. 837.299 was not invalidated by patents 260.6:;gand 276155, issued to him prior to 188&, for improvements SUbsidiary to the main invention, for their subsidiary character appears on the face of such patents. although, owing to delays in the patent office, they were issued before the patent for the main In· vention. 47 Fed· .Rep. 48, affirmed. ' The Brl1sh patents No. 337,299, and No. 266,090 did not expire with the Italian patent issued to him August 8,1882; for division D of the Italian patent was deaigned to ,(lover,. not the main invention, but Brush'S invention made in 1882 of plates specially prepared for the purpose of more rapidly forming active material thereon by the Plante method of electrical disintegration. 47 Fed. Rep. 48, affirmed. The Brush patent No. 266,090 must be llmited to electrodes on which the active material is made by applying the Plante method of electrical disintegration, or other "forming" process, to plates which, are ribbed, honeycombed, studded, or equiValently prepared. 47 Fed. Rep. 48, modified. SAME-ENLARGElIIENT 0'1' CLAIMs-DVERLAPPlNG PATENTS. OIl' CLUlII.
10.
SAlliE-FoREIGN PATE:s'T-EIi'FEOT O'l'EXPlRA!l'ION ON A1cIRIOAN PATE:qT.
11.
19.
Where an inventor makes a generio invention and also subordinate specUic inventions, and presents the whole seri8ll in a set of contemporaneous applications, he cannot be allowed, by subsequent amendments couched in general terms, to enlarge the boundaries of each invention 60 as to extend each into the bordel'll of another, and thus obtain a series of overlapping patents.
Appeal from the Circuit Court ofthe United States for the Southem District of New York. Modified and affirmed. Frederick H. Betta and Edmund Wetmore, for appellants. W. a. Witter, W. H. Kenyrm, and fJharla E. Mitchell, for appellee. Before LACOMBE and SHIPMAN, Circuit Judges. SHIPMAN, Circuit Judge. This is an appeal from a decree of the circuit court for the southern district of New York, which enjoiued the defendants, against the infringement of the 7th and 14th claims of letters patent No. 266,090, dated October 17,1882, and of the 1st, 2d, 3d, 6th, 7th, and 12th claims of letters patent No. 337,299, dated March 2,1886, each of said patents having been granted to Charles F. Brush for improvements in secondary batteries for the current storing of electrical energy. The applications were filed as follows: that of No. 266,090 on June 9, 1881, and that of No. 337,299 on June 13, 1881. The subject-matter of this litigation has been three times examined by Judge CoXE, in the cases of the present defendant against the Julien Electric Company, (38 Fed. Rep. 126,) of the present complainant against the Julien Electric Company, (41 Fed. Rep. 679,) and in this suit, (47 Fed. Rep. 48.) This repeated scrutiny has caused some of the questions which were presented in the pleadings to disappear from the case, while the vigor of other defenses, which have been successively supported and resisted, has become impaired. The questions which still remain for investigation are important, and, mainly by reason of the numerous patents which Mr. Brush has taken, are entangled; but the three opinions which have been written have freed the subject from much of its perplexity. Patent No. 337,299 is the most important, and will be first considered. It solely relates to secondary batteries. A secondary battery was well defined by Judge COXE to be "a battery which has no original power of developing a current of electricity, and is antive only when rendered SO by sending a current, elsewhere generated, through it." Sir William
132
FEDERAL REPORTER,
vol. 52.
Thomson, in his deposition in the first Julien Case, had stated the distinction between a primary and a secondary battery, as follows: "A is a which is active only when rendered so by sending a current through it from an independent source of electric energy. A primary battery is one which is active in virtue of the materials Pi which it is made." Electricity is chemically generated by virtue of these materials. The electrodes are unlike and inherently differ from each other electro-motively. The positive plate is dissolved in the battery fluid in which it is placed. and which is ordinarily dilute sulphuric acid. "The other electrode collects the electric energy from the liquid, and by this chemical union a current of electricity is developed." The two electrodes of a purely secondary battery are of the same kind, are not separated electro-motively, and are insoluble in the battery fluid, but, "by subjecting these elements to the action of an electric current, the two are differentiated and rendered electro-positive and electro-negative with respect to each other, depending entirely on which is conneeted with the positive pole of the charging generator and which with the negative pole thereof." The electrodes absorb either the hydrogen or oxygen which is set free from the liquid by the charging current, whicll in popular, though not in scientific, language, is called absorbing electricity; hence the significance of the name "storage battery," which suggests the idea ofcontinuance or duration of use. The capacity of a primary to give a current is limited; it is soon exhausted; "while in the secondary battery the amount of current which may be obh.tined deppndsentirelyupon the resistance of the conducting wires discl;mrging' it,';, alld the battery may be charged and discharged for an indefinitenunaber of times. The commercial importance of a secondary battery is easily recognized from this statement of its points of unlikeness to a primary battery. frior to the inventionoftpe Brush and the Faure batteries, the only secondary battery in use Wa!! that of Plante, which was invented about the year 1860. The following statement of the Chemical effect of the successive of the electric current upon the two plain plates of rolled or pressed lead, of which this battery was composed, is condensed from the more elaborate statement in the 'appellee's printed argument: The plates having beel:l. immersed in an electrolyte of dilute sulphuric acid, and having been respectively connected to the two poles of any suitable source of electricity, by means of which a current was passed through the plates, oxygen was developed on one plate and hydrogen on the other. The hydrogen passed off in bubbles,leaving its lead plate pl"actically unaffected, but the oxygen combined chemically with the lead of the other plate until it had formed a film or skin of peroxide of lead, of a finely-divided, granular 'character, like rust. The skin, of peroxide, operating to protect the underlying lead, soon stopped the acof the oxygen on the lead. A small current or discharge was produced I but too small to be of value. Plante ascertained that there must be correspondingly thick films on each plate. He therefore reversed the dil'ectionof his current, developed oxygen on the hydrogen plate and
ELECTRICAL ACCUMULATOR CO. V. BRUSR ELECTRIC CO.
133
hydrogen on the oxygen plate, which took away the oxygen from the oxide film and left the surface granular or spongy metallic lead. These reversed charges were repeated for days and sometimes for weeks. The result was to disintegrate, through the action of electricity, the surface of the plain lead plates, and to form spongy layers of lead thereon. This granular layer is what is called the active material of the battery; that is, material which becomes practically and actively capable of receiving and discharging electricity by the passage of an electric current. The core of the original plate mechanically supported the active material and conducted the current through it. This operation of the breaking up of the surface of solid lead plates so as to create porous coatings, in other words, of the "formation" of the active material of a battery by electrical disintegration, was the distinguishing feature of the Plante secondary battery. It occupied a long and therefore expensive amount of time, and was incumbered by other mechanical difficulties, one of which· was the thinness of the layers, and another, the tendency of the layer to peel off from the plate. These minor defects were partially avoided by increasing the number and diminishing the surface of the plain plates. The improvement described in No. 337,299 was confessedly an improvement upon the Plante battery and upon no other, and, in the language of the specification, consisted "broadly in a secondary battery plate or element having active or absorptive material primarily and mechanically applied thereto or combined therewith, as contradistinguished from a plate or element having the active material produced by the disintegrating action of electricity, as in the well-known Plante process." The mechauical application of a layer of lead oxide to each one of two lead plates, before the plates are placed in the battery fiuid,-these coatings being at once active material, and ready for the charging when immersed in the battery fiuid,-was, speaking in general terms, the distinguishing feature of the Brush invention. The drawings of the patent show a plain plate. and also corrugated, ribbed, slotted, honeycomhed,and studded plates of various forms. The first conception of Brush was a plain plate of lead coated with lead oxide, which was retained in position by a sheet of paper or felt, which was secured to the plate by strips of wood. The more perfected method of construction consisted in changing the plate into a ribbed or corrugated or slotted plate, and in filling the ribs and corrugations with the lead oxide, which was retained in position by being rammed or pressed into the open receptacles. The patentee deemed peroxide to be the best oxide of lead to be used, but, as it is expensive, directed that red lead might be used, and suggested that protoxide of lead or litharge might also be used. The specification says: "When a pair of pIal es such as I have descriQed are associated together to form a secondary battery, and immersed in dilute sulphuric acid. and charged by the passage of an electric current in the usual manner, one of the plates has its coating peroxidized, if a lower oxide of lead was employed for the Coating and forms the oxygen element of the battery, while the other plate has
134 ilis,coating;.of oxide redueElf1!to the metallic state and then ab$ol\ba IJydrogen, the hYdrogen {\lement qf the battery." ; ·.. "/!The clairils 'which are to be consideted upon the present,appeal' are as 'follows:" "(1) A. sec6ndary-battertelementorelectrb'de, consisting ofa plate or suitable SUppolitpriinarily coated or combined 'with mechanically-applied. active material. or material adapted to becomtl active, su bstantiaHy as set forth. "(2) In a secondary battery, an electrode consisting of a plate or support with a coating Ilr sm:face layer Of, .an absorptive substance, auch as metaIHc oxide, applied theret(), substantially Set forth. "(3) A plate or suitable support primarilY coated or combined with meoxide of lead or equivalent lead compound, SUbstantially liS set forth.'" . "(6) A plate or Buitablesupport provided with grooves, perforations, or receptacles, and, primarily coated. COmbined, or filled, with mechanically-applie,d active, material, or material adapted· to become active, substantially as set forth. ' . . "(7) A plate or suitable support provided with grooves, perforations, or receptacles, and primarily coated, combined, or filled with mechanically-applied oxide of lead or equivalent lead compound. substantiaUyas set forth." "(12) The method of making plates or electrodes for secondary batteries. consisting-in primarily combining active with suitable plates or supports in cQ,J;\tql.distinction to forming the active material by an eleotricat'dishitegration of the plat!" or support, substantially as set forth." . Thefle describell.nd necessarily refer to a secondary battery as defined, a plate or support which is insoluble in the liquid, mechll.nicll.l1y supports the active material and electrically conducts the current of electricity it, the specified active or absorptive materials being oxid49B of lead which are primarily mechanically applied to the plates, and in, such staUiof minute division as to be at once capable of being charged without previous process of "formation" by electrical disintegration.. The firat question, that of novelty , brings directly into view the much discussed subjeotof ;priority of invention as between Mr. Brush and Camille A. F.aure, who, in France, of which country he was a citizen, invented, in 1878, the same improvement upon the Plante battery, by the use of lead oxide, which he applied to the plates in the form of a paste or cement. His.French patent was dated October 20, 1880, and, inasmuch as he was a citizen of France, he is not permitted to claim his of the United States, who, invention before that date, as against a being also an original inventor, Elubsequently received a patent for his own invention in this country. Faure's application for a patent in this country was filed April 20, 1881, and the patent thereon, No. 252,002, was issued on 'January 8, 1882. Brush's application, and the Faure patent were put into interference in March, 1882, in the patent office. The subject-matter involved in the interference was the fundamental principle of each inv!'lotion,-that of "a plate of a secondary battery provided with a surface layer of an absorptive substance, such as metallic o.'dde, applied thereto." .After a long delay in the office, priority was adjudged to Brush, and bis patent was issued in 1886. The defend-
ELECTRICAL ACCUMULATOR CO. tI. BRUSH ELECTRIC CO.
135
this suit, as owner of the Faure patent, then brought suit for its infringement against the Julien Electric Company; In that suit the question of priority' as between Brush and Faure was thoroughly tried. The circuit court decided that Faure was the inventor of a secondary battery electrode coated with a mechanically-applied layer of lead, or like insoluble substance, placed upon the supporting plate in the form of a paste, paint, or cement,' prior to immersion in the battery fluid; that hewus not the inventor of an electrode otherwiM coated; and that upon filing his disclaimer, thus limiting the first claim of the patent. the accumulator company was entitled to a decree. Thecomplaillant in that case,' being the defendant here, filed such a disclaimer. had filed a bill in equity in: the United States circuit Mutt in one of the districts of Ohio, for the repeal of the Brush patent; upon the ground that he (Faure) was the prior inventor of the broad invention described in the first claim of 252,002. After the disclaimer, this bill was dismissed upon Faure's motion. Inasmuch as the defendant, being the owner of the Faure patent, has j as the reault of a direct issue on the subject of priority, disclaimed the right of Faure in this country to the invention, except as limited, a renewal of a discussion of the question of priority is useless. We next come to other devices which are alleged to anticipate especially the first three claims of the patent, in the event of a liberal and broad construction of those claims. This question was most extensively discussed in the record of the first Julien Case, with respect to the Faure patent, and has been less elaborately considered by the experts in this case, and turns upon the proper construction of the term" secondary battery." It is admitted that the definition of a secondary battery, which has been already given, is a correct one; but it is said that, at the date of the Brush and Faure inventions, the term "secondary battery" was often used by writers and scientists in a larger and looser sense, and included a battery in which electrodes of different materials are employed, and capable of yielding a current without being previously charged from an external Bource; that such a battery, although also a primary battery, is a secondary battery when it is used as such, and it is so used when it has become exhausted and "is regenerated or brought back to its former condition by the direct action upon itself of an independent source of electric energy." Hence it is claimed that if Brush used the term in this larger sense, and if the language of his claims is liberally construed, then, in SOme of the pre-existing deacriptions of batteries, there are described structures which possessed the elements of a plate primarily combined with mechanically-applied active material of some sort. It is perhaps sufficient to say that such a construction of the Brush patent requires one to assume that Brush did not mean what the history of the invention and of the patent and its manifest intent make it apparent that he did mean. He is describing an improvementnpon a. Plante secondary battery, and upon his of producing active material by the disintegrating action of electricity upon two lead electrodes insoluble in the battery fluid.. Brush's secondary battery is Plante's see-
136
ondary,battery improved. audhis language is to be read in ,the Hghtof that tachnd the fact that he was speaking only of a current-storing, deV.iOlil' serves no useful purpose to strive to show that the :Bll\lsh, patent was anticipated because scientist had descrilJild a battery which Qorresponds with the general phraseology of the olaims. provided their language should be so construed as to include the <flasslof batteriesw4ich has been mentioned, a construction which is forbid'den the history of the invention and by a disinterested examination of the patent. . Passing by, therefore, batteries of the primary type, the structures ('}f. another character, which are in this case deemed by the defendant to beat ,adversely upon the Brush claims to novelty, are those described in the patents to George G. Percival, dated April 3, 1866, and to Georges L. I:.eclanche, dated April 23, 1867. Percival's invention, he says in his, patent, consisted "in substituting layers of pulverized gas carbon, or some otherconductillg powder, (coarse lead powder,) separated by a la.ter or.pmte 'of some porous substance, for the metallic plates of which the ofthe pole are ordinarily formed." The layers constitute theelee,trodes, are wet bya proper solution, and, for convenience in establishi"ng connection with these layers, there is on each end of the box I a screw CUPi fastened to,a/lll,p of This invention, as described, residadsolcly.in the sUQstitution of separate layers of coarse powder for thetwometaHic plates of a Plante battery. The copper slips, which when exposed to dilute sulphuric acid would be dissolved, are not plates otsupports, but aTe mere oonnecting devices; the layers are not coatings of Plates, and probll.bly are to be" formed" by the Plante process oLelectricaldisiutegration. Leclanche's "polarizationappltratus or electrical acc\UUulator" is of two flasks, in which are placed two plates of gralJhite, Of tW9 plates of unoxidizable metal. These two plates in. powdered graphite,-a good conductor of electricity, with a liquid which is an equally good conductor, such as "potash water." There is no similarity between Leclanche's plates and .his ,graphite, which is unoxidizable, though it may be minutely oxidized, and the lead plates and the absorptive Qxide of lead of Brush or Faure. The Leclanche device was furthermore intended to be constantly associated with the primary battery, when in use. These structures do not affect Brush's patent 337,299. Not only theinventioIl,asdescribed in the 1st, 2d, and 3d claims, belongs to him I but he was the first who rammed or pressed the dry powder-the form in which his absorptive substance was used-into grooves or receptacles in the plates, as described in the 6th and 7th claims. There being no question as to infringement, the next point relates to the validity of the various claims which are solely the subject of this appeal, in view of other patellts to Mr. Brush of a prior or of the same date. On July 9,1881, Mr. Brush filed in the patent office eight divisional applications for patents, marked from" A "t9 "R," inclusive, and on .June 13, 1881, he filed two more applications respectively marked "Case I tl and "Case .J.": He .drew the ten origillRI specifications ,himself. The
ELECTRICAL ACCUMULATOR CO. ". BRUSH ELECTRIC 00.
137
first eight were designed to subdivide his improvements upon the Plante battery into as many separate patents as practicable, and to state the subdivisions in a progressive order and system. Cases I and J were intended to describe and claim the important and generic departure from Plante. In process of time some of these applications were subdivided. Cases I and J came into interference with Faure's patent, and patents thereon were not issued until March 2, 1886. Meanwhile the other applications had become patents, and in some of the cases the specifications had been amended and rewritten, with a view to caverns large a field as was attainable. The result of this subdivision of the main invention, the alteration of specifications, and the grant of divisional patents at different dates, was to make an entangled mass of pat. ents, Which are to some extent intertwined with which has caused perplexity to experts, counsel, and judges, and which has endangered the strength and the validity of the patents themselves. As Cases! andJ were originally presented to the patent office, distinction between them seemed to rest upon the difference between porous or spongy lead and oxide of lead as active materials. When the patents 337,298 and 337,299 were issued, the difference between them is that between "an "absorptive substance, or an absorptive substance adapted to, be transformed into active material," on the one hand, and" active material, or material adapted to become active," on the other. There is a theoretical and scientific difference,',between the articles which may be called" absorptive "and "active." Spongy lead has no oxygen, but will absorb oxygen, and thus become active; the oxides of lead have :ilbsorbed oxygen, and are therefore active, but "it is admitted that the moment a battery constructed with plates having either coating is charged or discharged, all distinction vanishes." As the terms are used in the electrical art, they' are synonymous, and it is especially certain that, as these two patents are phrased, there is no substantial difference in the character of the inventions which are described and claimed. The attempt to draw a line of demarkation between them is ineffectual. The bill of complaint in this case originally included 337,298, but upon motion of the complainants was dismissed as to that patent. This was done after Judge COXE'S analysis and criticism of the two patents in the second Julien Case. The defendants insist that, as 337,298 is the earlier patent, and is for the same invention as 337,299, thelatter patent is void. This conclusion would be true if the premises were true. The applications were filen on the same day, the patents were issued on the same day, and are owned by the same person. The testimony shows that it can never be ascertained which patent actually first received the final signature which rendered it a complete and legal deed; the mere fact that one has an earlier number signifies merely that the patent office followed Brush's alphabetical order; so that a judicial ascertainment of the fact of priority is impossible, and there are no known presumptions which can be resorted to upon which to base a finding. The owner of both patents has elected
,RE;PORTER,
·.337 ,299 as, one upon which it title to a al:e that it had such power of choice. Wl)Ilt'W9»Jd be the of separate owners of two separate and c()ntemiWraneous patents fpr the SUlBe invention? isa question which improper that No. 337,298 should be a wh!3re. it can be assigned or be made ,the subject suggested that a disclaimer should be .filed, but of sale.,,;I:t the the statutes in regard to disclaimer were not intended for. andd,onpt seem applic.able to, a case of this sort, in which the patentee· the ,actual and first inventor of the whole of the described and patentable thing which is specifie4 in the patent. It therefore seems propel' t.hlj.ta:final decree. eh<;mld be framed in accordauQe with the eir. case, and should, inoonJ;lection with the finding of the :validityofthespecifiedclaims of 337,299, adjudge 337,298 to be inoperativ6, and: prohihitits assignmenHor sale.' The is tbat the Brush patents Nos. 260,,653 and 276,IMooveundbwlude everything properly claimed and described in the first sevenrclahIi$ of No. 337,299.. NQ.260,653 was a division of the applicati(i),Q' dEl$ignatedaaQlls.e I, was applied for June 1o, 1882, and was patented J:Illy4, 1882. The remainder of that applii:W.tion was patented .as No. a37,298. "The single claim is as follows: , "In a seconda'ry battery, an element consisting of a structure of etagere like formj in the spacel3 its shelves. lead in a finely-dilj.ll. set forth," , This,clairnW1as inserteddn Case I in September, 1881,.at>the suggestion !Qf'the, patent office, aDd was put in interference with ,an· a.pplication of Augu&t de!Mcl'itens,\\lhich was decirled in Brush's favor on December 5, 1881. ' On J.une' 15,1882, he filed, an application .whichcontained only the claim ,Which was the subject of this interference. No. ,260 1653 states on its face that it is a division of Case I in.' which other features. of the :invention .were claimed ,so that the public was not misled into the idea tbat unpatented portions of the invention bad been abandoned·. The specification, although the broad invention is described, and the: thnttbe patent is for the etagere like form or series of shelves in whieh the finely..divided lead of Case I was held. If letters patent W!;lre to be treated by courts in the critical and hostile spirit which a,plea in abatement formerly encountered, the contention of the defendant would have technical importance; but courts do not construe letters patent for the purpase of their destruction. The historyQf No. 260,653 entirely contradicts the theory of its breadth. The'l;lro!ld invention was the subject of Case I. Pending its consideration in the patent office, a subordinate claim subject(lf interferen,ceupon which a pat.. entwas issued, which proolaimed its divisional cbllfsdter. Subsequently the patents were issued ,'upon the broad claims which had lingered in interference in the patent office, and it is now contended that the main -invention had been in fact included in the claim for a series of 'shelves 'which held· finely-diVided lead. Such a construction is not demanded
ELECTRICAL ACCUMULATOR 00· .,. BRUSH :Il:LECTRIC 00.
'139
by decided cases, or by known principles of law, and a construction, in accordance with its apparent scope, will therefore be placed upon No. 260,653. . No. 276,155 was originally Case B, and is apparently for a corrugated plate, which has an active coating electrically produced thereon, or which is provided with an active or absorbing coating. The same suggt*'tions which have already been made apply to this patent, which was intended to include only a limited part of the improvements of Brush. Whether it anticipates the fourth and fifth claims of 337,299, which are not in issue in this litigation, is not important in this case. The effect of Brush's Italian patent upon No. 337,299 remains to be considered. Brush applied for an Italian patent on July 28, 1882. It was sealed August 8, 1882, was issued for the term of three years from September 30, 1882, and was not prolonged. It had expired when 337,299 was issued. It was in force when No. 266,090 was issued. Under section 4887, an existing foreign patent is not a bar to a subsequent United States patent for the same invention to the same inventor, unless the invention has been in public use in this country for two years prior to the application. Existing foreign patents for a claimed invention limit the duration of subsequent United States patents for the same essential invention to the same inventor. The defendant claims that an expired foreign patent for a specified and described invention is so substantial a limitation that it is in fact a bar to a subsequent United States patent for the same invention to the same inventor, and that an expired foreign patent for a subordinate feature of a described but unclaimed invention is a bar to a subsequent United States patent to the same inventor for the generic invention, because, by not taking out his foreign patentfor the generic invention, and by permitting the short-term patent to expire, he had abandoned the generic invention to the world. The interesting questions of law which are involved in these two propositions will become practically important if the facts of the case require their decision. In our,opinion, the Italian patent is not the same in its essential particulars with anyone of t.he inventions which are claimed in 337 ,299, and the home "patent would not be infringed by a structure made in accordance with the provisions of the foreign patent." The question in regard to No. 337,299 turns upon the character of the invention disclosed or claimed in divisions C and D of the Italian patent, particularly in division D. The alleged destructive effect of this division was the question upon which the experts most strenuously contended, the question being whether division D is the Brush battery of 1880, in which active material in the form of powder is primarily pressed into receptacles, whereby the process of electrical disintegration is superseded, or is for a different invention, made in 1882, of a secondary plate prepared by compressing partially oxidized powdered lead into a core of roughened or perforated sheet lead, so as to create a solid plate c0herent and malleable, having minute seams of oxide of lead, upon which plate the active material is to be produced by electrical disintegration, the alleged improvement being to facilitate the Plante process. Another
FEPERAL
yol.52.
descdbed invention was to have the solidified mass of parthe entire body of the battery plate. The witnesses differed, both upon the intent and meaning of the language of this divisioD,.and !tlso upon the result which would be attained by the process as qellcribed, the defendant insisting that, whatever pressure was brought to bear upon the partially oxidized particles of lead. the result would qot be a cqmpact plate, but a" porous mass of mingled particles of lead, and lead. oxide," which would be. substantially the same thing as the dry powder pressed into the receptacles of the plate of 337,299. The limguage of the Italian patent, its history, and that of the United 266,762, 266,089, 262,533, which were States patents Nos. 27, 1,882, being Cases K, M, N. and 0, and which are. applied for are Jort1J.e general characteristics of division D, as distinguished from I,orJ, cause us to believe that there is a clearly-marked separatiQu;between Cases lor, J ajld division D, and satisfy us of the weaknfJss part of the defense. The electrode$,of the respective patents are dit\'el'en,t thiugs, and 0pjOldoes not interfere with the other. The disthis questiou, and of the reasons which lell-d to our concIube greatlYPJ;olouged, but we prefer to summarize the important copsiderations, and as the principal ,reasons wbich led Judge COXE to a,dppt the same view have also controlled us, we restate them in substalltially his language: ,(:1) The language of the Italian patent is entirely different from that oftha patent in suit. 1'1Ie drawings are different, (2) The in ventor's statement of his intellt alld purpose in taki ng the foreign patent and his. reasons for not attempting to patent the invention of No, 337,299 abroad is corroborated by his notes made at the time he was perfecting the inventions patented abroad. When these notes are placed side by side with corresponding portions of the Italian patent it will be seen that they are substantially similar. (3) The fact that a sharp distinction ill drawn in No. 387,299 between the inventor's and Plante's ,method. is nothing Of this in the Italian patent. On the other inventor clearly intimates that the plates of division D are to be fotmed by the Plante process. (4) The Italian patent is capable of a narrowconstl'uction which differentiates it from the patents in suit. (5) The: fact that the element of the Italian patent is produced by heavy pressure, hydraulic or otherwise, whereby the {iarticles of lead and lead oxide are into a firmlY coherent mass having minute veins of oxide of lead ra,m,ifying through it, unlike the plate of the United States pat· ents Insllit. (6) 'j'he "mass" described in Italian patent is malleable, arid capable of'being made Into strips or wires, and manipulated so as to form any style of element. Neither the active material of No. 337.299 'nor the coltl'Pleted plate of that patellt is capabJeofsuch treatment. (7) No. 337.299 is designed to cover Mr. BrUSh's in vel'ltionsmade in the sumlller of 1879 and· ill the 8ummer, and: autumn of 1880. The Itlllian patent is designed to cover theillventiolls,of Division tCwBS for 'the: same invention which is described in United States patent No. 261 1512, originally Case F. It describes a method of pr.oviding coating of porous metal upon the plate of a secondary batter.y., which. metal is reduced from the oxide "through the agency of a ,Qf any suitable reducinJl;' gas, and at a temperature insufficient to·fuse tpe reduced metal." Piain or corrugated or perforated
form
ICLECTRICAL ACCUMULATOR CO. V. BRUSH ELECTRIC CO.
141
plates may be used. Knowledge in regard to this invention must be derived from the patent alone, for apparently it has never been subjected to a crucial test by practice. It is a particular process for coating lead plates, and the coating possesses properties differing from, but intermediate between, those of spongy lead and electrically deposited coherent lead. The patent also says that these properties are similar to those of the electrically deposited metal described in division B, which are also described in United States patent No. 274,082, originally known as Case D. The peculiarities of this coating can be easily understood, for it is deposited by electrical action in the manner customary in any process of electro plating, and before the process of "forming" the plate. The coating, though porous in an electrical sense, is firmly attached to the plate, and is firm in its structure. The active layer is formed by the Plante process. The coating of division Cis between this solid coating and the spongy lead, and batteries made according to this process demand a "forming" process analogous to. that required by the Plante battery, for the coating must require disintegration. We do not perceive that either the principle or 8. subordinate feature of 337,299 is contained in divi.siQl\ C, and it is quite manifest that anyone who should make batteries in .accordance with it would never be asked to defend himself against infringement of 337,299. The question respecting 266,090 remains to be considered. The first form of Brush's broad invention of the primary mechanical application {Jf active material to the lead core or plate was a plain plate covered with lead oxide, which was retained in position by blotting paper, which was secured to the plate by strings or strips of wood. This was obviously a clumsy and insufficient method of combining or coating the plate with active material, and the ribbed or corrugated plate was SUbstituted, in which the oxide was easily retained in position. This more perfect form {Jf the invention is described in the sixth and seventh claims of 337,299. The battery of these claims is the one distinctly known as the storage battery of Brush, and is the one with which the battery of the defend.ants, which is filled with the paste or cement of Faure, corresponds. But it is also obvious that the ribbed or grooved plate possessed advantages in a secondary battery in which the Plante process of electrical disintegration or some kindred process of "forming" was used. A larger surface of metal was exposed, the expansion or contraction of the active eoating was confined to many small .areas, and the peeling, which was unavoidable upon a large plain surface, was diminished, if not prevented. Accordingly, Mr. Brush applied in Case C, which subsequently became No. 266,090, for a patent upon a secondary-battery plate, ribbed, honeycombed, studded, "or equivalently prepared." The descriptive part of this specification manifestly referred only to the method of pro-clueing active material by formation from the substance of the plate and ribs, whether by the Plante process of electrical disintegration, or by the improved forming process of division A. The scratched, perforated, thin platina foiled plates of Kirchoff were no anticipation of the plate as .described in the specification. The distinction between Cases I or J and
142
FEDERAL -ImPORTER,
C weteitithe mind of the drat1ghtsman, who meant that I and J should refei'to the generic invention _ aild that Case C should be limited to a narrow'improvement upon Plante. Brit the desire for enlargement of greW, and by &:n ainendmentof June 20; 1882, wherein the specification was rewritten, the draughtsman said: "This form of elemerit is also well adapted to receive and retain 'any active coating which may be applied thereto." This sentence the patent office promptly requiredshould be omitted, upon the ground that it was "new matter," and it was thereafter canceled. The following sentence had, however, beep to remain: "Figures 8 and 9 are * * * plates arranged ready for charging, after having been 'formed,' or in any mannerpro'vided with active coating." The corresponding part of the sentence in the. original application was, "after having been previously RcebTding to the process described in Case A, or otherwise." The new specification also made cast lead instead of rolled or pressed lead a patentable improvement, but Judge COXE directed a disclaimer of the pureljreastlead claiIils, upon the ground that they contained nothing patentable; and they were disclaimed accordingly. Upon the strength of the clause "in any manner provided with active coating," which slipped by the scrUtiny of the patent office, it is now insisted, that the general language of the various claims covers a plate in a battery provided 'with any' kind of active coatingeitherelectric/tlff,formed or mechanically applied. The l1.terallanguage of the claims hf'br()!ld enough for such a construction, but itwould be obtained by anuridue enlargement Of the meaning of an amendment, the effect of which was riot appreciated by the examiner. Mr. Brush has obtained all to ,which he was entitled by construing his patents for improved form of plates in the order and system in which they were originally presented to thepatentoffi,ce. What the construction ought to be had different inventor!! taken the progressive staps, ,it is not necessary to inquire, but when one'inventor makes a generic invention and also subordinate specific inventions, and presents the whole series in a set ofcontemporaneous applications, the pl:\tentee must not be enabled, by an ingenious Use of general terms, to enlarge the boundaries of each invention, to extend each into the borders of another. and obtain a series of overlapping patents. This construction' is narroWer than that permitted by Judge COXE, who found an infringement by the defendants of two claims only. As construed _ by court there is noirifringement of No. 266,090. The decree Of the circu-it court will be modified in accordance with the directions bereincoritained, with costs of this court to the appellant. Tn will be a.ffirmed.
mONCLAD MANUE"G CO. t!. JACOBI:. VOLLRATH MANUE"G CO.
143
lRONCJ1U) MANUE"G Co.·". JACOB J. VOLLRATH MA:!WF'G Co., Limited;
et at.
(Circuft Court, E, D. Wisconsin.
June 27,1892,)'
PAT"E1IlTS, :pon INVENTIONS-PUELIMINAny INJUNCTION-WHEN ISSUED,
2. SAME-PROVINCE OF PATENT OFFICE-INTERFERENCES.
UJ)on an interference 1n the patent office the question is all to priority of invention, and anYthing said by the patent ,oflloials 8S to the construotion of the olaims is not binding upon the courts in a suit for infringement,
, In Equity. Bill by the Ironclad Manufacturing Company !l-gainst the Jacob J. Vollrath Manufacturing Company, Limited, and ot,qers, for infringement of a patent. ' Demed. On motion for a preliminary injunction. . L. Bond,MarcellU8 Bailey, and Ernest,C. Webb, for complaimuit·· DyrenjortJi & DyrenjWtJ", .for defendants. ",.
, JENKINS. pistriqtJudge, (orally.) , The bill is filed for an infringement ,of a patent for pepperedeniuueled j'ron ware, issued to Chester. Comstock, ,the patent being numbered 415,161, dated 1889, and for a preliminaryinjtlnction torestrain the defendants from the alleged infringement this litigation. The specifiQation, after stating the process for obtainiiigthe "foundation' coating," it may be called, of the vessel that is to be enameled,pror.eeds: ' "When surface to be enameled has been properly pickled and cleansed in the usual way, and a paste of suitable material has been prepared in anyone of the usual ways for the production of either the ·mottled' ware, · white' ware, or 'plain' ware, I incorporate in such paste, preferably, comminuted .or granula.r oxide of iroll, and, after coating the surface of tJhe iron witb such paste,baving so commingled with it the comminuted oxide of iron, it is SUbjected in the mume to the usual fusing proCess, which produces the glazed appearance, but which also leaves the comminlJ,ted or granular oxide, in its natural or substantially natural condition, in practically mechanical ,sus, pension withintbe body of the glaze, and producing an appearance in tbe finished article which I here denominate as 'peppered' enameled ironware, in contradistinction to the restbetic appearance of the severally and prevIously described well-known artIcles in tbe trade. While. as I have said, I prefer to use granular or comminuted oxide of iron to produce this effect, it wmbe understood that I may employ any other suitable contrasting body which will not fuse at the ordinary temperature employed for fusiIig the paste which 8ubsequentlyconstitutes the coating, and I therefore do not wish to be limited in any degree to tbe character or quality of the materIal employed for this purpose, so long as it results in the production of what I have termed.' peppel'ed "enameled ironware, by which term I intend and mean enameled ironware having mechanically suspended or held in and. throughout the glaze a granular or comminuted. material in color contrasting with that of the body of the enameled coatIng, and comparatively infusible as compared with the . glaze, so that when thelatter is fused ontbe wal'e the granular or comminuted