.584
voJ.
63.
.Of.conrse notl if we di/illlegard;tlle office "of the flexible joints, and the office of flexibly joining the pipe to the dredge. But thil!lWIice cannot be It enables the action ,of the dredging machine to as it swings on a side feed and excavates. This is the essence of the invention, the new result which WaB,Jlot accomplished before, and bears the test of all the definitions of combinations to which I have been cited. The same remarks are llppUcable,to'the tu,rntable or vertiCal anchors, whichever be used. Counsel say; "If any other holding is substituted for the turntable and spuds, the dredge does, its work just the same." It would only do some work "just the same," and besides the turntable or spuds have other offiCes than "holding." It permits swinging as well,-workon a side feed, work on a forward feed. This is' ignored by counseL . Thelerigth of this opinion makeS jt impossible to consider at length the defenses of the abandonment .of the invention or of the application. I think the evidencieshows sufficient excuse for delay. . For ,'the same. reason,-that ·is, .it would make this opinion too long,":""Ihave refrained from a detailed comparison of plaintiff's apparatus and devices with those which defendant asserts anticipate or limit them. Such a comparison, to be sufficient or satisfactory, would necessarily have to be very long. I 16 and; 26 of patent No. 318,859; 13 and 14, 18 and 22, of patent No. 355,251,-and between claims 16 and 33 I find no patentable difference. Decree will be entered holding infringement of claims 10, 16, 25, 53,54, and 59 of patent No. 318,859, and 13, 17,.and 18 of patent No. 355,25J SIMONDS MANUF'G CO. et al. v. E. C. ATKINS & CO. (Circuit Court, D. Indiana. No. 8,667. October 5, 1894.)
1.
PA.TENTS-CONSTRUCTION OF CLAIMS-INFRINGEMENT-CROSS CnT SAWS.
The Simonds patent No. 269,728, for a cross-cut saw, as an article of manufft.cture, if valid at all, is limited to a saw formed by curvilinear grinding along lines parallel with its cutting edge, so as to be of substantially the same thickness throughout the length of its curved cutting edj!;e. and of gradually thickness in the direction of its width fl'oII\ cutting edge to back; and the patent is not infringed by a saw having a curved cutting edge and straight back, and made from a plate of steel rolled so as to have a gradually diminishing thickness from cutting edge to back, and ground on straight lines, so that· it has a slightly greater thickness along the central part of the cutting edge than at the ends, and a uniform thickness along the back from end to end.
2. 8AME'-PATENTABLE INVENTION-CHANGE IN SIZE.
It would seem that a patent for a special form of cross-cut saw as an article of manufacture cannot sustained when it appears that there previously existed a small saw for cutting fire wood, of substantially the same form; for the change is one merely of size or proportion, which is not patentable.
SIMONDS MANUF'G CO. 'D. E. C,ATKINS & CO.
585
This was a suit to obtain an injunction and damages for an alleged infringement of a patent. Robert S. Taylor and Causten Browne, for complainants. Chester Bradf.ord, Wm. M. Eccles, and Augustus Lynch Mason. for def.endant. BAKER, District Judge. This is a suit in equity brought by the Simonds Manufacturing Company, a Massachusetts corporation, and George F. Simonds, a citizen of Massachusetts, against E. C. Atkins & Co., an Indiana corporation, to obtain an injunction and damages for an alleged infringement of letters patent 269,728, dated December 26, 1882, granted to George F. Simonds for an alleged improvement in cross-cut saws. The defenses interposed are noninfringement; that George F. Simonds is not the first or original inventor of the patented device; that the same, or substantially the same, device was in public use or on sale in the United States for more than two years prior to the application for such patent; that there is no invention exhibited in the patented device; that the patent was surreptitiously obtained by the failure to disclose the true state of the art; that the same, or substantially the same, device in all its essential features was long before known to and publicly used by various persons named in the answer; that· the same, or substantially the same, device, as well as the method of constructing it, were shown or described in other patents of the United States, and in other printed publications set up in the answer; that the same saw, in all its essential features, which the defendant is now manufacturing, and which is complained of as the infringing saw, had been manufactured by the defendant and its predecessors for more than two years prior to the application for the Simonds patent; and that the arrangement and combination of parts and all the essential features of the patented device were known to and generally used by the public for more than two years before the application for the patent was made. The specifications forming part of the letters patent state that the invention has for its object the construction of a thin-backed cross-cut saw that shall cut an even kerf throughout its length, that shall not bind in its cut, and that shall be relatively thickened and strengthened·towards the ends, whereby more lumber can be cut, and with less labor, than heretO'fore. The invention is stated to consist in a cross-cut saw of substantially uniform thickness throughout the length of its curved cutting edge, and of gradually diminishing thickness in the direction of its width from cutting edge to back. After describing the old cross-cut saws, and the various methods of grinding employed in their manufacture, the specifications proceed to state the method of grinding to be employed in making the cross-cut saw which the inventor claimed to have discovered, and which he desired to secure py letters patent, as follows: "Instead of moving the saw plate to the action of the in a rectilinear path, I give it such movement as to cause every part of its curved cutting edge, throughout the entire length thereof, to pass successively through-
586
J'lllDER.t\.L
vol. 63.
out the plane. 1$ to the of the presser bar .and the grinding line at substantially-the same point during any given passage, so that the lines of uniform thickness in the tapered plate are curves running substantially parallel to the general curvature of toe cutting edge, because by keepiIlg the cutting edge of the saw plate where it passes the grinding line at the same distahCe from the apex of the angle of inclination of the presser bar all other portions which pass through any given constant part of the angUlar space between the presser bar and the grinder, and which are con· sequently . redUced to uniform thickness, .will necessarily be acted upon at the same distance from the point at'whiCh the cutting edge'is maintained, and will therefore be located in ncurve which conforms to the curvature t;1le cutting edge," '. ,
Th'(!, claim is single, and is as follows: "What t claim as my' invention is,' as auew article of manufacture, a cross· cut sawot SUbstantially uniform thickness throughout the length.of its curved and of gradually diminislling thickness in the direction of its cutting edge to back.'" .'
In view of the prior state of the art as shown by the proofs, and especially in viewofthe admission of the complainants' expe'rt, it is doubtfulwhethertbepatent in question is sustainable, because lacking :in' invention. ,Cross-cut :saws,having a curved cutting edge, and: thinner at the' back than at the cutting edge, were well known:'anc;l in common use long' prior to the complainants' discovery. By the methods of. straight or rectilinear<grinding then practiced cross-cut saws 'Were not made, and perhaps were incapableof.s1J.ccessful manufa,cture, of such' uniforl)l thickness throughout the :entire lengthiof,· theireul'V'ed cutting edge, and of such graduallY diminishing thickness in the direction' of their width from. cutting edge to back, as are made by the grinding, as practiced by cOlnplaiilants, along curvilinear lines parallel with' the cutting edge. The difference inform of the old cross-cut saw and of the saw claimed by complainants is necessarily slight, .and the claim of the patent cannot be construed 8'0 broadly as to include the old forms of cross-cut saws. Therefore the claim, if sustainable at all, must cover a form ofeaw embraced within narrow limits of variation. Whether, within, these nal'row limits, it ought to be sustained, is not free from ,doubt, in view of the admissi,on of complainantsf expert that wood saws were previously known and in public use substantially the same as complainants' saw, viz. "a cross-cut saw [meaning wood saws] of substantially uniform thickness throughout the length of its curved cutting edge, and of gradually'diminishing thickness,-L e. tapered, from cutting edge to back." It is not necessary to. determine whether or not the uncontradicted.admission of their expert concludes the complainants, as seemstbbe held in Wells v. Jacques, 1 Ban. & A. 60,75. 1 Com· plainants'e:kpert endeaViors to differentiate these wood saws from the sawdeMribed in and secured by the patent in question by the statements ·. that "wood saws are saw blades intended to be used in a saw frame for cross-cutting comparatively small pieces of wood, such as ordinary fire wOQd," and that "they are used under wholly different oon.ditions from the cross-cut saws of the Simonds patent, 1
Fed. Oas.No. 17,398.
SIMONDS MANUF'GCO. V. E. C; ATKINS &; CO.
587
although some of them have a curved cutting edge of uniform thickness, and a substantially uniform taper from cutting edge to back," and that "they belong to a different class from the crosscut saws, and are commonly ground by different machinery and different methods," so that the identity in form of the wood saws and the saw claimed in the Simonds patent would not suggest any way in which the same characteristics might be embodied in a crosscut saw. The patent in question secures to the complainants their saw solely as an article of manufacture. It does not secure the methods employed in manufacturing it, nor the uses to which it may be devoted. The essential differences pointed out by the expert between the wood saws and the saw of complainants have reo lation to their relative size, uses, and methods of manufacture, which are features not covered by the patent. Can a patent for a cross-cut saw, as an article of manufacture, be sustained when it is admitted that wood saws were old and. well known in the arts, and were, in fact, cross-cut saws of substantially uniform thickness throughout the length of their curved cutting edge, and of gradually diminishing thickness from cutting edge to back? It is firmly established that mere change in size or proportion does not involve invention. This principle is and applied in the case of Planing-Mach. Co.v. Keith, 101 U. S.479, 490. It is there said: "It may be admitted it wOllld be too weak for general planing work upon boards or plank. It is comparatively a small machine. It would not cease to be the same machine, in principle, if any one or all of its constituents were enlarged and strengthened, so that it.might perform heavier work."
And it is further said: "And it is not perceived why, if enlarged, it would not answer all the purposes of the Woodbury machine. Mere enlargement is not invention. The simplest mechanic can make such modification."
This doctrine has been applied in many other decisions of the supreme court. It has been held that changing the length and size of valve openings in the reed-board of an· organ is not invention (Estey v. Burdett, 109 U. S. 633, 3 Sup. Ct. 531); that A change in the guide frame or rack of a cider press is not invention (Pomace Holder Co. v. Ferguson, 119 U. S. 335, 7 Sup. Ct. 382); that a change in the size and the corresponding width ·of the of the ridge stone or cap roof stones in roofs for vaults is not invention (French v. Carter, 137 U. S. 239, 11 Sup. Ct. 90); that a change only in form, proportions, or degree, doing substantially the same thing in the same way by substantially the same means, but with better results, is not invention (Ansonia Brass & Copper Co. v. Electrical Supply Co., 144 U. S. 11,.12 Sup. Ct. 601). But conceding that. the patent may be sustained notwithstanding complainants' saw differs from the old wood saws only in size, uses, and methods of manufacture, still the claim in question must be limited to a cross-cut saw of substantially uniform thickness throughout the length of its curved cutting .edge, and of gradually diminishing thickness in the direction of its width from cutting edge to back. The claim itself does not,
588
BDERAL REPORTER,
by$e! general terms employed, conclusively deteJ:'mine the precise form Qf saw intended to be secured by the patent as an article of manufacture. But reading the claim----1:tS we, may-in connection with tbe.specifications, no doubt, it seems to me,can be entertained in regard to the cross-cut saw which the patentee intended to secure, and which he has if his discovery involved invention. It is a cross-cut saw formed by curvilinear grinding along lines parallel with its curved cutting edge, the saw so produced being of substantially uniform thickness throughout the length of its curved cutting edge, of gradually diminishing thickness in the direction of its width' from cutting edge to back. No other method of grinding than that pointed out in the specifications will produce with any degree of certainty or accuracy the form of saw which the patentee conceived he had discovered, and which he intended to secure by his patent. With this construction of the claim, it is conceded that defendant's saw is not an infringement. The defendant uses the old and well-known saw blade or plate of commerce in the manufacture of its saws, It consists of a blade or plate (If steel having a curved cutting, edge and a straight back. so rolled as to have a gradually diminishing thickness from cutting edge to back, and having a slightly greater thickness along the central part of the cutting edge than at the ends, and having a Uniform thickness along the back from end to end. From such blades or plates the defendant manufactures the alleged infringing saws by first cleaning them without any change of form, and then by grinding them in straight or rectilinear lines, the grinding commencing at a part at the back of the blade or plate a few inches from one end, and continuing thence in a right line to a point within a few inches of the other end, and the contact of the grinder at each recurring passage over the blade or plate is shorter than the preceding one. The blade or plate is thus passed under the grinder up to a point within about two inches of the curved cutting edge, thereby producing what is called by the defendant its "segmentally ground saw." The saw thus manufactured, except where thus segmentally ground, retains the exact form of the original blade or plate of commerce, except for such slight and immatedal change as may be caused by polishing. In my opinion, the saw of the defendant, thus made, is not an infringement of the patent in question, even if valid, and the bill will therefore be dismissed for want of equity,· at the costs of the complainants.
WESTINGHOUSE et aL v. EDISON ELECTRIO LIGHT 00. (Circuit Court of Appeals,Third Circuit. Septembet 11, 1894.) No.7.
Matters whlcb are only incidentally to in the specifications, and not describM., cannot be read into the clairqa by means of the words "substantially asset forth," especially when the claims themselves are un. lW.d e,xa.ct.
PATlllNTS!"'CLIMITATION OF
AS SE'l' FORTH."
WESTINGHOUSE' V. EDISON ELECTRIC LIGHT CO.
589
2. 8.
SAME-COMBINATION CLAIMS-SEPARATE ELEMENTS.
A claim for a combination carries with it an implication that the separate elements are old. The Corn-Planter Patent, 23 Wall. 181, followed. The Edison patent, No. 264,642, for preventing the drop in tension upon electric light wires by combining a feeding circuit with a consumption circuit, the main conductors of which are so proportioned as to maintain such uniformity of pressure upon them that there is practically no variance in the candle power of the lamps connected, therewith, is void as to the first three claims, as showing merely the application of mechanical and engineering skill to solve the difficulty as soon as it was made to appear by the production of a practicable incandescent electric lamp. The lack of invention is especially apparent in view of the prior state of the art as shown by the French patent to Khotinsky, of 1875. 55 Fed. 490, reversed.
SAME-PATENTABLE INVENTION-PRIOR ART-ELECTRIC LIGHTING CmCUITs.
Appeal from the Circuit Oourt of the United States for the District of New Jersey. This was a bill in equity brought by the Edison Electric Light Company against Westinghouse, Church, Kerr & Co. "to restrain the infringement of the Edison patent for an electric distribution and translation system." The circuit court sustained the patent and rendered a decree for complainant (55 Fed. 490), and defendants appealed. Leonard E. Curtis and Edmund Wetmore, for appellants. Frederic H. Betts, for appellee. Before ACHESON and DALLAS, Circuit Judges, and BUTLER. District Judge. ACHESON, Circuit Judge. This suit was for the alleged infringement by the defendant of letters patent of the United States to Thomas A. Edison, No. 264,642, dated September 19, 1882, granted upon an application filed August 9, 1880, for an "electric distribution and translation system." After stating that the "invention relates to a method of equalizing the tension or pressure of the current through an entire system of electric lighting, or other translation of electric force, preventing what is ordinarily known as a 'drop' in those portions of the system the more remote from the central station," the specification proceeds thus: "As is well known from patents already granted me, and prior applications pending, I use in my system an electric light formed of a continuous incandescing conductor, large numbers of which are grouped into one system, supplied and regulated from a central station; main conductors leading from and to the central station; each lamp or translating device being in a derived circuit to the main conductors; the entire system being what is known as a 'multiple-arc' system. From a central station the main conductors may proceed, and it is intended that they should, to a great distance, and supply a large number of translating devices. In such cases there is inevitably a difference in tension between various parts of the circuit, due to the resistance of the main conductors. This may be partially remedied by making the conductors very large near or at the station, graduaNy decreasing their size or conducting capacity, but such plan only lessens the ratio ot fall. To obviate the difficulty I provide feeding conductors which extend from the generator or generators to the main conductors of the lamp or consumption circuit or circuits; such feeding conductors not having any translating devices connected therewith, and being connected with' the main COllductors of the cynsumption circuit or circuits at the center, ends, or other
590',
.0'
l.li
:pDERAL, REP 9l\TER,
yol,. 6:3.
points on such main conductors. Ji'mma severals.ets,·of such,' feedingicoodfuctQl.'liI Ulay::run;each'rset'feeding'lnto its own lamp or consumption, ch:eul1:,fOr ,all-the, ,sets ,c6nnec1ed, system of lamp or consumpVon It will be sem that ):l1!'l ?rOllUPOn j:lle feeding conductors the)ampliOf t;bl! system" the . ppwo/r of ,We ):>y the drop ,CirCUIt orClrcults,between the upon theml:\.m cpnquctors "'nd ofa set,ol condj.tctorsah.t:lpoints most distant from any feeding conductorS. ,'tn, ,tp in8.lntaiil salIl.e candle, power throughout the system, or circuits should be sf? the ,dmp in tensioll upon shall. not eXceed a defimte exam,ple, five per cent. +,hlS drop Wlll make It dif,ferenceof a cMldle in !lll the sixteen can41e power lamps of the. system, whicl1-.difeerence is lMlt.percepti1:lleto ,the eye. 'CPO]). the feeding conductors, however, any loss' can be made. This loss will be varied ac(tq 10C;/:llitite!l>,and tll,e eopper for COnducting purposes and horse power for generation. This loss upon the feeding conductors in large, \lnd systepls. be,greater ;than upon the main conductors' of' the consumption cirCUIt orcircui1!eL It may be, for example, about fifteen per cent.; ,but'circumstailces'might make it desirable to dimini!!h the loss upon. the as low, as that Upon tbe IQ3,iJ;l of the. Oil circuits, or to increase the loss upon I the feei(1\Jl'S to m()re tha'n fifteerl per cent. · . . . When it is desired toUBe llfew'laIilps hear ilie eentrali;;titltiorUhey' may'be piaced upon a direct circuit therefrom, with resistance at the commencement or home end of the, circuit sufficient to then reduce the of, the current in. such circuit so that it shall beeqtiaI to that 'ill' tilE!' more -dIstant· ch'cuits1 and one or more of such circuits may be combined with' :{l1e'circllitsbefere described. Quildings pr ,blocks of lamPfl, a,re to be supplied, it may be desirable to lay'tliereforseparate' feeders, Inl:lulated from each other. Where several central stations are used in a city,' each having feeding conductors leading to lamp-circuit conductors of the description beb.e. .to '9f all ,the stathe, entire .system of the
dta"o/itlgs ',. e.
r.a.l..·· f O '" Of, cir<:Ui. ;l1ll.
A,j:on!?Amption thewain of which the dro-p in ten- ' sion'is llot sufficient to. power of ;the lamps connected therewith, in combination' with ,feeding conductors connecting the conBU .. c.,irC ...Uit with,the:i\ource of eltlctrical euergy, aud having n,. 0 translati]).8' ,devices connected, tllereWith, the dliOP iJl tension upon, such feeding cond,udprs llot affecting the 'reilltivecandle power .Q'f the lamps of the consumpsubst!lutUllly aS8l .1Iortk (2) A, consumption circuit, in the t ,co.llductorsof which there is; a definite, ,filmall drop: in 'tension, not sufficlenqQ vary.practically the of the lampS.connected therewitll. with feeding conductors COllllecting the consumption circuit, tn w,Ltl:l the. so.urceof .electrical:energ, and .having: no translating devices conloss uponsqc;h :(eedingcondu,dol's:'bed.ng greater than uppJ). tlul, 1;1!.e,-,lJOOsumption circui1:+ substantiltlly as set fo,ft#., .,,{3) .Tbe circuit, in the ,main conductors sufficient t9 vary prac;ticallythe candle lXlW1lr of thCil CQIl-uectllq ,with ill. feedll,lg, ctrCUit having no trall/>latingdevic;el$" the S/)urce of electtlcal energy to the center Qf, as set fortb)' !, '
ows: , ;:.;,;.'; r:.',,"
of the ._
: - . . . ii. r, _' ,,'
of the Crib.'e;,d... 1.n th, inca,ti-;>,Pr;".! ;Th..e pate,nt :was, ,ffharged only ..with the Illan.d third. claims, which are as fol- .
t:Q..e
$,U
of this, Jt IclailllS should be,
'lltldentood.
i
11. EDISON ELECrittC LIGHT CO.
591
This patent does not deal with the complicated general problem of the distribution of electricity, and the' subdivision of the current for the purpose of domestic illumination. The patent is not for an incandescent lamp, or for a dynamofor generating electricity, or for the arrangement of the lamps in multiple arc, or for indicating and regulating devices for controlling the current from a central station, singly or combined. The patent deals with the one particular difficulty of drop in tension or fall of pressure,-loss of electro-motive force,-due to the resistance of the conductors to the electric flow. To remedy the evil effect therefrom the patentee pl'ovides special conductors for the transmission of electricity, extending from the generator to the main conductors with which the lamps are connected, and from which they are served. The patent is for a specific arrangement and proportioning of the two sets of oonductors, which together constitute the complete 'Circuit. The claims in question are perfectly clear and definite. Each claim is for a combination consisting of two constituents, namely, a consumption circnit in the main conductors of which the '. ,drop in tension is not sufficient to vary practically the candle power of the lamps connected therewith, and feeding conductors (a feeding circuit) having no translating devices thereon, uniting the consumption circuit with the source of electrical energy. Any 'electric consumption circuit, the main conductors of which are so proportioned that the drop in tension therein is not sufficient to vary practically the candle power of its lamps, in combination with feeding conductors on which are no translating devices, falls within the scope of the claims. Plainly, each of these claims is for a single circuit composed of a pair of transmitting conductors and a . pair of distributing conductors having the specified characteristics, withont regard to any other like circuit. The gist of the alleged invention is in the combination and proportioning of the two parts of the circuit, and not in the scale of use. Oontrary to these views, the circuit court was of the opinion that certain unex.pressed qualifications are to be incorporated into each of the claims by virtue of the concluding words, "substantially as set forth." After discussing the specified limitations the court said: "But this statement of the claims would be highly inaccurate, if permitted to stand alone. Other limitations must be regarded. Not only are the circuits, feeding and consumption, unique in their special characteristics, but. as well, are jointly applicable to the lighting by incandescent lamps, in multi,pie arc, of large areas, of which portions or parcels are very distant or remote from a central station, from which, however, emanates complete control. It is true that these latter limitations are not expressed in terms in the -claims under consideration, or in either of them. But, in drafting the claims, Mr. Edison, by the words used, clearly referred to the descriptive phraseology of the specifications of his invention preceding them."
Accordingly, the court construed these several claims as involving the lighting of a "large territory," by the use of "large numbers" of incandescent lamps, and as implying central station regulation whereby variable drop in tension in remote parts of the system may be controlled. But in our judgment these limitations are inadmissible. The fact is, pending the application for this patent
592
sQught to; ame:pd" the specitlcation, and insert anew claim l1if> of the matter of central station regulation; but the"pl:!ltent office rejected the proposed amendment for the assigned reaspnthat describes ,and claims an invention not even hinted at in tlileorigiqal specification,nor shown in any of the drawings." While central station is incidentally referred to in the intI'lmuctorypart of the specification, it is not described at all, and., clearly is:po part of this alleged invention. The only demeans to secure equality of pressure between the lamps of a circuit near the centralstatioh and the lamps of a circuit more remote therefrom are resistanee coils put in the supply conductors of the near circuit. This device is covered by the fifth claim, infringement of which is ,not charged. The claims in question are :unambiguous an(lexact. Upon well-settled principles, then, limitations other than: those expressed to be excluded. Railroad Co. v. Mellon, 104 U.S. 112 ; Co. v. Greenleaf, 117 U. S. '554, 6 .Sup. Ot. 846; White y. Dunbar, 119 U. S. 47, 52, 7 Sup. Ct. 72. As was said in the last-cited case: "The cllUm is a I3tatutory requirement prescribed for the very purpose of making the patentee define precisely what his invention is; and it is unjust to the pUblic. lis well as an eva,sion of the law, to construe .it in a manner different trom the plain import of its terms."
"Whete. a patentee, after describing· a: claims as his inveiltion a .certain combination. of elements, ora· certain device or part of the machine, conclusive, so far as that patent is conthis is an implied cerned, RI> if,it were e;x:pNlSsed, that the speCific combination or thing claimed is the onIypart.wbicbthe patentee: regards as new."
The . ,claims here, we thinlr, were purposely framed broadly, so as to' cpver the simplest form of tpe, alleged inv:ention. The claims w,ith which we llreconcerned, ,as we have seen, are eachf(lof. a combination of consumption circuit and feed,ing having ,respectively the peculiar properties The primary question for solution, then, is whether it inventiqJli in a patentable sense, to combine a circuit for feedingonlywitb,:a oonsumption circuit, the main conductors of which, are so proportioned al!! to maintain such uniformity of pressure upon thew that there is practically no variance in the candle pow:er ()f the connected: therewith. Now, a claimf()l,'ll.combinati()ncarries with it an implication that the separate are old. Says Mr. Justice Bradley, speaking for the court, in ,the case of The Corn-Planter Patent, 23 Wall. 181, 224:
In the, pJiesent iJistance the proofs with the implication. Most certainly the patent in suit discloses no' new means either for transmitting a current of electricity, or for equalizing upon the, pircuit. It is to benoted that the patent it 'altQgether judgment·. of" the electrical engineerQr constru.ctor to determine the relative lengths of the two parts of the co,wpined circuit, and the proper thickness of the conductors. ' .to these points no definite instructions are given. Undoubtedly It well known prior to the alleged invention that
WESTINGHOUSE, Vi EDISON ELECTRIC "LIGHT CO.
593
a large quantity of electrical energy could be transmitted a considerable distance by a conductor of small size. Now, with respect to the loss of pressure upon the feeding conductors, which loss depends upon the thickness of the Qonductors, the specification tells us that "this loss will be varied according to localities, and the relative cost of copper for conducting purposes and horse power for generation." It is said that in large and extended systems this loss would generally be greater than the loss upon the main conductors of the consumption circuit, and "may be, for example, about fifteen per cent.," but that circumstances might make it desirable to diminish the loss down even as low as that upon the main conductors of the consumption circuit, or to increase the loss upon the feeders to more than fifteen per cent. Thus is it left, where indeed it properly belongs, to the intelligence of the electrical engineer to select feeding conductors of larger or smaner diameter, depending upon the comparative cost of copper and of power, or upon some special circumstances. Of a truth, the feeding conductors of the patent are nothing more than the ordinary supply wires running from the source of the electrical energy. The proper function of such oonductors being to transmit the electric current to the point where it is to be utilized, as a matter of course they have no "translating devices connected therewith." The statement in the specification, "it will be seen that the drop upon the feeding conductors has no effect upon the relative candle power of the lamps of the ,system, the relative candle power of the lamps being affected only by the drop upon the main oonductors of the consumption circuit or circuits between the end of a set of feedinr:' conductors and points most distant from any feeding conductors," is the mention >of an obvious fact. Indeed; it is put as a self-evident proposition. That no loss upon the supply part of the circuit can affect the relative candle power of the lamps upon the consumption part of the circuit is a quality inhering in the circuit by the very nature of things. It is a necessary incident of any circuit, part of which supplies the current and part of which distributes it. The specification states that, "in order to maintain practically the same candle power throughout the system, the main conductors of the consumption circuit or circuits should be so proportioned that the drop in tension upon them shall not exceed a definite small limit, for example, five per cent," but gives no information whatever how this. i'S done. This silence is highly significant. The specification assumes that to secure uniformity of eleotrical pressure, and thus uniformity of effect, is a matter of common knowledge among those skilled in the electrical art, as indeed it was. The drop or fall in tension or pressure in an electrical current in its passage through a conductor was an observed and well-understood phenomenon long prior to the year 1880. It was known that its cause was the resistance offered by the conductor to the flow of the current, and the laws governing the flow of electricity and the drop in tension had been 'ascertained and published, and were perfectly familiar to all skilled electricians. They understood the effect upon, the drop in v.63F.no.4-38
. 094
tensionr1df!variations:iri'the size:and length of the condudtdrllnd()rf changesdn the electromotive force of thegeneratorjand the ascer.tainmentot the proportions tOitiegivlID to a conductor to securea definite fall in pressure with a ;given current was a mete matter of calculation, to aid which formulae had been worked out. In the. art aspractieed long.before 1880, we ,find 'an arrangement of circuits substantially the same as that of the patent in suit. i :flere a large number of articles to be plated simultaneously are suspended in the bath byseparate wires attached to ,a metallic rod placed across the top of the tank; that is to say, the articles are arranged in multiple arc with respect to the electric current. The rod is supplied with the current by conducting wires which connect the rod with the dynamo, and the current divides among the suspended articles. It will be perceived that here one 'part of the ,cirooitds usede:x:clusively for transmitting the current, . and the ptker part for distributing it. Equality of electric pressure . among the articles tdbe treated is essential to good w0l'k; and in >fact the distributing rods were made. ofsuchshle:thatany material fall in pressure was avoided. " ' . .,']urningnow to the Khotinlllky Frencti patent of 1815,whichre,lates to the art of electriclighting,we disc()ver that it show-s and de$cribes a circuit of feeding ahd 'consumption partsincoI:!lbination, identical in form with that of the paterit in suit. ,)The laIDps of are:incandescent hUupS',' and-they are arranged ; multiple arc. ReJmows a m:agneto'elootl'ic machine'located "in the, center of this system, or at pointY' 'From the :magneto-electric machine run two "condncting wires;" with which Mtranslating devices!areconnected. TheBe condncting or feeding .wires connect with the "main conductors"Of the Circuit, with which all the lamps are connected. In his diagrams 1 and 3 the feeding conductors connect with the center of the consumption circuit, and '1 in diagram 2 at . Undeniably, Khotinsky's combined arrangement of feeding conductors and :distributing conductors is precisely the arrangement of the patent inSUlt: Nothing, indeed, ist said by Khotinsky about proportioning the main conductors of the consumption circuit· so as to prevent injurious drop in tension. .It was, however, wholly unnecessary for' him to say anything upon .that. subject All that was needful to overcome the difficulty due to drop in tension was to make the main condt1Ctors of the consumption circuit of proper thickness. The laws governing the flow and distribution of electricity in conductors were perfectly well known· to electricians at the date of Khotinsky's patent, and any electrical engineer of ordinary skill then called on to construct a Khotinsky's system, it is to be assumed, would have acted in' :accordance with COD:l.U1OOl electrical knowledge, principles, and pra'Cticej in other words, he would have made the main conductors ':oftheconsumption circuit sufficiently large to be :of practical utility. How can it be affirmed :that it would require ihventH}ll simply to circuit in the'ID8Illner the proportion patent in suit,-to· make :his transmitting wires and, distributing
WESTINGHOUSEV. E;DISON EI,ECTRIC LIGHT CO.
595
conductors respectively of suitable size to perform their intended functions? Now it is quite true that prior to the year 1880 electric lighting for ordinary domestic purposes was not an accomplished fact. But this was not for lack of anything shown by the patent in suit. The great desideratum was a practical incandescent lamp. Such a lamp, with a filamental carbon conductor of high ret'listance, and burning with a very small amount of current, was devised in or about the year 1879, and it solved the problem of the practical subelectric current for incandescent lighting. The division of principle of this lamp was pronounced by Mr. Justice Bradley, in Consolidated Electric Light Co. v. McKeesport Light Co., 40 Fed. 21, 29, to have been "the grand discovery in the art of electric lighting, without which it could not have become a practical art for the purposes of general use in houses and cities." Such were the views which prevailed in the second circuit in the case of Edison Electric Light Co. v. United States Electric Lighting Co., 47 Fed. 454; Id., 3 G. C. A. 83,52 Fed. 300,-where it was decided that Mr. Edison was the first and original inventor of this lamp. Under the, proofs, we. cannot assent to the suggestion that the alleged invention here in question supplied a long-felt want, or met a difficulty generally recognized in the art as a serious hindrance to the distribution of the electric current. In fact, prior to the application for this patent nQ incandescerit electric lighting plant had been built. 'l.'here had been no occasion to erect such plants, for no practically. successful incandescent lamp had yet been furnished to the public. Hence electrical engineers had not been called upon to deal practically with the problem of drop in tension in the construction of such' plants. In truth, the feeder and main system of distributio,n came naturally, in the ordinary progress of the art of incandescent electric lighting, as and when needed. In his Cantor Lectures of February, 1885 (put in evidence by the plaintiff below), Prof.' George Forbes, speaking of this feeder and main system, well said, "It is a result which would certainly have been arrived at by anyone who thoroughly and intelligently worked out the: problem." True, he added that, so far as he could discover, !Ir. Edison "was the first, by a long time, to hit upon this cure for the evil." But this latter statement is without significance when we reflect that a practical incandescent lamp, without which domestic electric illumination was impossible, was invented so short a time before the application for this patent, and that when the pccasion for its use actually arose the feeder and main systeIJ:!. ,was forthcoming. It is a greatmistake,as the proofs demonstrate, to attribute to the patent in suit the merit of having solved the problem of economically snpplying the requisite current for extensive use to circuits covering large· areas, portions of which are at great distances from, the source, of electrical energy. Whatever of economy in copper may result from the plan of .the patent is conand the cost of copfined altQgeth-:l' to the :trl;tnsmitting compflratively limits.. .
596
J'EDER&L REPORTER,
The e:Jttehsiol1:of incandescent electric lighting over large areas is really due to liJubsequent inventions. Conspicuous among the more recent discoveries and improvements which have brought incandescent lighti:qg into extensive and common use is the converter or alternMWg c'Q.i'rent system, whereby the electric current is transmitted from.the· generatingsmtion to a very great distance at an extremely high pressure, and is converted at the points of distribution into the low-pressure currents required by the incandescent . lamps. Tl1e multiple"arc or derived-circuit system of' distribution being confessedly old, and the high-resistance incanflescent lamp having been devised, to provide "feeding conductors which extend from the generator or generators to the main conductors of the lamp or consumption current," was,it seems to us, an obvious engineering expedient. Then, as already shown, the proper proportioning of the two parts Mille combined circuit involved only the exercise of the common kn.0wledge and skill of the electrician. The facts, we think, clearly bringtfuis case within the principles announced by the supreme court in the case of Hollister v. Manufacturing Co., 113 U. S. 59,5 Sup. dt. 717, and inkindred cases. The plan of electric distribution covered by the claims in question is not "the creative work of that inventive faculty which it was the purpose of the constituand reward." To sustain these tion and pateiit laws to claims would be to sanctiOha monopoly in that which belongs to the public. In announcing this conclusion we cannot do better than quote some obsertations of the supreme court which apply with great force to this case, as we read the proofs. In A,tlantic Works v. Brady, 107 U. S. 192, 199, 2 Sup. Ct. 225, the court said: "The process of development In manufactures creates a constant demand for new appllances, which the skllI of ordinary head workmen and engineers is generally adequate to devise, and which, Indeed, are the natural anti proper outgrowth of such development. Each step forward prepares the for the next, and each is usually- taken by spontaneous trials and attempts in a hundred different places. To grant to a single patty a monopoly of ery slight advance made. except where the exercise of invention. somewhat abov:e.ordinary mechanical or engineering skill, is distinctly shown, is un· just in principle and injurious in its consequences."
The appellant maintains that under the ruling of the supreme court, in the case of Miller v. Manufacturing Co., 151 U. 13.186, 14 Sup. Ot. 310,'the first, second,'tifidthird claims of the patent in suit are void, because of the grant· of an earlier patent to Mr. Edison, No. 239,147, daJtedMarcli 22,:1881, whichdealt:with the evil of'drop in and provided a by feeding conductors, having no lamps bonnected with mains of the oonsnmpti<m circuits arranged tilsetBCdncentricallyaround the central generating station, arid so proportioned as to Be<lllre equal electrical pressure throughouf1the entire system. It is contended that the invention described and Claimed in the earlier patent is for one form of the alleged invention described in the and by the first three claims thereof, and thatno'dtle could use the invention of the earlier patent withOut iU'ftinging': these later claims;! The question thus
BEACH ". AMERICAN BOX-MACHINE CO.
597
raised is a serious one, but we do not deem it to be necessary to eon· sider it, inasmuch as the views we have expressed upon the other branch of the case are decisive. The decree of the court below is reversed, and the cause is remanded, with directions to enter a decree dismissing the bill of complaint, with costs. BEACH v. AMERICAN BOX-MACHINE CO. et a.L (Circuit Court, N. D. New York. No. 6,170. October 15, 1894.)
PATENTS-ANTICIPATION-TESTS OF INVENTION-MECHANICAL SKILL.
Whether it required more than mechanical skill to change an alleged anticipating machine into the machine of the patent is to be determined by the inquiry whether a mere mechanic would de,rive from the prior machine the suggestion which w.ould lead him to make the change. Apparently slight changes producing a new combination and a new and beneficial result raise presumption of invention. Reissue is warranted by mistake in drawings which renders the machine inoperative in part only. '
SAME-INVENTION-COMBINATION-NEW RESULTS. '
SAME-VALIDITY OF REISSUE-MISTAKE IN DRAWINGS.
A claim may be made more full and complete, by amendment, without new oath, if no new invention is claimed, and the old claim is not materially broadened. 5. SAME-INFRINGEMENT-PAPER Box MACHINE. Where the two machines perform the same work in substantially the same way, infringement is not avoided by the fact that one part of defendant's machine does a little more, and the other a little less, than corresponding parts in complainant's machine. 6. SAME-PARTICULAR PATENT. · The Beach reissue. No. 11,167. for a machine for attaching stays to the comers of paper or strawboard boxes, sustaIned and declared infringed.
4. SAME-AMPLIFICATION OF DESCRIPTION AND CLAIMS.
This was a suit in eqnity by Fred H. Beach against the Ameri· can Box·Machine Company and Horace Inman and others for the infringement of a patent. On final hearing. Benjamin F. Lee and John Dane,Jr., for complainant. Edmund Wetmore and William A. Redding, for defendants. COXE, District Judge. This action is founded upon reissued letters patent No. 11,167, granted to the complainant May' 26, 1891, for a machine for attaching stays to the corners of paper or strawboard boxes. The application for the original was filed June 10, 1885. The original, No. 41,7,225, was dated February 24, 1891. The application for the reissue :was filed April 9, 1891. Prior to the invention it had been customary, says the patentee, to apply the fastening strips over the joints at the corners of the boxes, and paste them there, by hand. This work is now done by the patented machine. The claims involved are as follows: "(1) The combinatioIii with opposing clamping dies having diverging working .faces, of a feeding mechanism constructed to deliver stay strips between