Claims 1, 3, 5 and 6 of reissued letters patent No. 8718,
granted May 20, 1879, to Charles F. Brush for "improvements in
electric lamps," the original patent, No. 203,411 having been
granted to said Brush May 7, 1878, are invalid by reason of their
prior existence as perfected inventions in a lamp made in June,
1876, by one Hayes.
Although claims 5 and 6 speak of an "annular clamp," and the
apparatus of Hayes had a rectangular clamp, the latter embodied the
principle of the invention carried out by equivalent means, the
improvement, if any, in the use of the circular clamp over the
rectangular clamp being only a question of degree in the use of
substantially the same means.
In equity for the infringement of letters patent. Decree
dismissing the bill, from which the plaintiffs appealed. The case
is stated in the opinion.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is an appeal by the plaintiffs, Charles F. Brush and the
Brush Electric Company, in a suit in equity brought by them in the
Circuit Court of the United States for the Southern District of New
York, against C. Harrison Condit, Joseph Hanson, and Abraham Van
Winkle, from a decree dismissing with costs their bill of complaint
so far as it relates to reissued letters patent No. 8,718, granted
May 20, 1879, to Charles F. Brush, one of the plaintiffs, for
"improvements in electric lamps," on an application for a reissue
filed April 14, 1879, the original letters patent, No. 203,411,
having been granted
Page 132 U. S. 40
to said Brush, May 7, 1878, on an application filed September
28, 1877. The rights of the plaintiffs were finally rested upon an
alleged infringement of claims 1, 3, 5, and 6 of the reissue.
Another patent was sued on in the case, but at the final hearing
the bill in regard to it was dismissed with costs on motion of the
plaintiffs. The opinion of the circuit court, held by Judge
Shipman, on the merits as to reissue No. 8,718 is reported in 20 F.
826.
The specification of the reissue states the general nature of
the invention in these words:
"My invention relates to electric light mechanism, and it
consists in the following specified device, or its equivalent,
whereby the carbon sticks usually employed are automatically
adjusted and kept in such position and relation to each other that
a continuous and effective light shall be had without the necessity
of any manual interference."
In this automatic arrangement, the electric arc is established,
and then, as the electrodes are consumed, the arc is regulated by
causing the strength of the current and the length of the arc
mutually to control each other. There is no clockwork or other
extraneous power, but the action of the electric current alone
effects the necessary movements. The electrodes tend to move toward
each other at all times, and this tendency is opposed by the
electromagnetic action, which tends to separate them. These
opposing forces are designed to be in equilibrium when the
electrodes are at such a distance from each other as will produce
the maximum development of light with a given electric current. It
was to an electric arc lamp of this character that the invention of
Brush was to be applied. The construction of his arrangement, as
described in the specification of the reissue, is as follows: a
helix of insulated wire, such helix being in the form of a tube or
hollow cylinder, rests upon an insulated plate upheld by a metallic
post or standard. Within the cavity of the helix are contained an
iron core and a rod which passes longitudinally and loosely through
and within the core. This rod holds a carbon. The core is also made
to move very freely within the cavity of the helix, and is
partially supported by means of springs which push upward
Page 132 U. S. 41
against ears attached to the core. A ring of metal just below
the core surrounds the carbon holder and rests upon a floor or
support. One edge of the ring is over a lifting tongue, which is
attached to the core, while the opposite edge is a short distance
below the crown of an adjustable set screw. The design is that one
point of the ring may be lifted in such way as to clamp the carbon
holder, while a limit is placed to the upward movement of the core.
The poles of the battery being so attached that the circuit of an
electric current is completed, the core, by the force of the axial
magnetism, is drawn up within the cavity of the helix, and by means
of the lifting tongue one edge of the ring is lifted until, by its
angular impingement against the rod or carbon holder, it clamps
such rod, and also lifts it up to a distance limited by an
adjustable stop. While the ring preserves this angular relation
with and impingement against the rod, the rod will be firmly
retained, and prevented from moving through the ring. The
adjustable stop is fixed so that it shall arrest the lifting of the
rod when the two carbons are sufficiently separated from each
other. While the electric current is not passing, the rod can slide
readily through the loose ring and the core, and in this condition
gravity will cause the upper carbon to rest upon the lower carbon,
thus bringing the various parts of the device into the position of
a closed circuit. If, then, a current of electricity is passed
through the apparatus, it will instantly operate to lift the rod,
and thus separate the two carbons and produce the electric light.
As the carbons burn away, thus increasing the length of the voltaic
arc, the electric current diminishes in strength owing to the
increased resistance. This weakens the magnetism of the helix, and
accordingly the core, rod, and upper carbon move downward by the
force of gravity until the consequent shortening of the voltaic are
increases the strength of the current and stops such downward
movement. After a time, however, the ring will reach its floor or
support, and its downward movement will be arrested. Any further
downward movement of the core, however slight, will at once release
the rod, allowing it to slide through the ring until arrested by
the upward movement of the core due to the
Page 132 U. S. 42
increased magnetism. In continued operation, the normal position
of the ring is in contact with its lower support, the office of the
core being to regulate the sliding of the rod through it. If,
however, the rod accidentally slides too far, it will instantly and
automatically be raised again as at first, and the carbon points
thus be continued in proper relation to each other.
Claims 1, 3, 5, and 6 of the reissue, on which alone recovery is
sought, read as follows, there being eight claims in all in the
reissue as granted:
"1. In an electric lamp, the combination, with the carbon holder
and core, of a clamp surrounding the carbon holder, said clamp
being independent of the core, but adapted to be raised by a lifter
secured thereto, substantially as set forth."
"3. In an electric lamp, the combination of the core or
armature, C, the clamp, D, and adjustable stop, D', or their
equivalents, whereby the points of the carbons are separated from
each other when an electrical current is established -- prevented
from separating so as to break the current -- and gradually fed
together as the carbons are consumed, substantially as
described."
"5. In an electric lamp, the combination, with a carbon holder,
of an annular clamp surrounding the carbon holder, said clamp
adapted to be moved, and thereby to separate the carbon points by
electrical or magnetic action, substantially as herein set
forth."
"6. In an electric lamp, an annular clamp adapted to grasp and
move a carbon holder, substantially as shown."
What is called in these claims "the clamp, D," is the ring of
metal which surrounds the rod or carbon holder.
The specification of the reissue, as granted, contained the
following paragraph:
"I do not limit myself narrowly to the ring, D, as other devices
may be employed which would accomplish the same result. Any device
may be used which, while a current of electricity is not passing
through the helix, A, will permit the rod, B, to move freely up and
down, but which, when a current of electricity is passing through
the helix, will, by the raising of the core, C, operate both to
clamp
Page 132 U. S. 43
and to raise the rod, B, and thereby separate the carbon points,
F, F', and retain them in proper relation to each other."
On the 14th of October, 1881, the plaintiffs filed in the Patent
Office a disclaimer, in which they stated that the patentee had
claimed more than that of which he was the first inventor or
discoverer, by or in consequence of the use, in the specification,
of the language contained in the paragraph last above quoted, and
that there were material and substantial parts of the thing
patented, also embraced within the terms of the above quoted
paragraph, which were truly and justly the invention of Brush. The
paper went on to enter a disclaimer to that part of the subject
matter of the specification, and of claims 1, 2, 3, 5, and 6 of the
reissue, which, being embraced within the general language of the
above quoted paragraph, included as within the invention of Brush
"clamping devices substantially different in construction and mode
of operation from the clamp, D."
On the 6th of April, 1883, the plaintiffs filed in the Patent
Office a disclaimer of so much or such part of the invention
described in the reissue, and coming within the general language of
the third claim, as might cover or include as elements thereof "the
core or armature, C," and "the clamp, D," excepting when the core
or armature raises the clamp by a lifter secured to such core or
armature, substantially as described in the patent. The same paper
disclaimed the specific combinations forming the subject matter of
claims 2, 7, and 8.
Judge Shipman held that the first claim describes a clamp
independent of -- that is, not fixed to -- the core, but adapted to
be raised by a lifter secured to the core, and does not mean that
the clamp is independent of, and not in any way dependent for its
motion upon, the core, but is adapted to be raised by a lifter
secured to itself. He further held that the first claim does not
include the adjustable stop of the third claim, but includes only
the combination of the clamp and core and rod, with the described
elements which are necessary to cause an angular impingement upon
the rod, and an intermittent downward feeding of the rod. He also
held that the clamp of the sixth claim is not any annular clamp
adapted to grasp and
Page 132 U. S. 44
move a carbon holder, but means to describe in general terms the
clamp of the first claim, which raises, clamps, and feeds
downwardly the rod, preserving a practically uniform length of arc
by the described means, or an annular clamp surrounding the carbon
holder independently of the core, but adapted to be raised by a
lifter secured to the core, and some suitable agency to allow the
clamp to be tripped, and that the fifth claim includes the clamp of
the first and sixth claims, the carbon holder, the motor, and the
tripping device.
Judge Shipman examined the question of the novelty of claims 1,
3, 5, and 6, and arrived at the conclusion that they were invalid
by reason of their prior existence, as perfected inventions, in a
lamp made in June, 1876, by one Hayes at Ansonia, Connecticut. On
this subject, he says in his opinion:
"The clamp, in combination with the other necessary elements,
which was made by Charles H. Hayes, of Ansonia, Connecticut, and
was a part of a lamp which he constructed about the end of June,
1876, as an improvement upon the White lamp, is the combination of
the first and third claims of the Brush patent. The carbon rod was
square or rectangular, and therefore was surrounded by a
rectangular clamp which was independent of the core. It is not
denied that this clamp is the equivalent of an annular clamp. It
was raised by a lifter secured to the core, and was tripped by
coming in contact with a floor, while the ascent of the rod was
checked by the contact of the clamp with an adjustable stop."
"The plaintiffs' answer to the anticipatory character of this
clamp is that it was an abandoned experiment, and never was a
perfected invention. The facts in regard to its character and
position as an invention are as follows: Mr. Hayes was in 1876, and
has been continuously since, in the employ of Wallace & Sons,
who are large manufacturers of brass goods in Ansonia. In 1876,
this firm was trying to find a successful electric lamp to
manufacture. Mr. White furnished them with his device, which they
sent, as a part of their exhibit, to the Centennial Exhibition at
Philadelphia. Mr. Hayes testifies as follows:"
"Experiments with the White lamp showed its defects so strongly
or plainly that I designed this [the
Page 132 U. S. 45
Hayes] lamp to overcome those defects. I made rough drawings in
the middle or latter part of May, 1876. Commenced building the lamp
at once, and finished it about the end of June following. Tested
it, tried it, and made some minor alterations, and run it from time
to time, when a lamp was needed, until the 16th of September
following."
"At this time he was in Philadelphia, and a fellow employee by
the name of King, thinking that he could improve upon the clutch
and make the feeding of the carbons answer more promptly to changes
of the current or make the feeding less 'jerky,' obtained
permission from Wallace & Sons, who owned the clamp, to make an
alteration. The 'King clutch,' constructed upon a different
principle from that of the Hayes or the Brush clamp, was but into
the lamp, which has remained in use in the mill, and, since the end
of 1876, has been 'used in the electrical room for testing
machines, carbons, etc., and has been used for that purpose more or
less ever since.' But one Hayes lamp was made until a duplicate
specimen was made for use in this case. The Hayes clamp, it will be
observed, was used in the lamp only until September 16th. Prior to
that date, the use of the lamp with the original clamp is thus
described by Mr. Hayes upon cross-examination: 'It [the lamp] was
moved about and burned in different places -- in the mill and
outside -- and it was also burned in our other shop occasionally.'
This shop was known as the 'skirt shop,' the third floor of which
was used for electrical work. The mill and skirt shop were
ordinarily lighted by gas."
" Question. On what occasions did you use the lamp out of
doors?"
" Answer. The lamp was used out of doors on several occasions.
When gangs of men required light unloading freight from railway
cars. Digging for some work connected with the water power. I am
unable to specify positively any particular date, but have a
general recollection of being frequently called upon to make a
light for some such purposes."
" Q. Did you use it sometimes to test dynamos with in
June-September, 1876?"
" A. I think not during that time."
" Q. What other use did you put it to during those months except
the occasions out of doors which you have
Page 132 U. S. 46
mentioned?"
" A. It was used about the mill, more particularly around the
muffles, on occasions when it was necessary to work during the
evening."
"The use was a public one, in the presence of the employees of
the factory. The Hayes clamp has been preserved, and was an exhibit
in the case. Wallace & Sons thereafter, after much
experimenting, went, to a limited extent, into the manufacture of
what were known in the case as 'plate lamps,' or lamps having two
carbon plates instead of rods, but did not continue the business
long. They say that the discontinuance was due to the fact that
they did not have a satisfactory generator. The Hayes clamp was
used upon the plate lamps, but, as has been said, was used upon but
one carbon pencil electric lamp. The plaintiffs vigorously insist
that the Hayes clamp was not a completed and successful invention,
but that its use was merely tentative and experimental, and was
permanently abandoned because the device did not promise to be
successful."
"Two facts are manifest: 1st, that the Hayes clamp was the clamp
of the Brush patent, and 2d, that it became, after September 16th,
a disused piece of mechanism in connection with carbon points. The
question then is was it a perfected and publicly known invention
the use of which was abandoned prior to the date of the Brush
invention, or was its use merely experimental, which ended in an
abandoned experiment on September 16th?"
"The plaintiffs, in support of their view, say that Wallace
& Sons were searching for a successful lamp and were exhibitors
of an electric lamp at the Centennial Exhibition; that inventors
were in their employ, who were encouraged to make experiments and
trials in the hope that something good might be produced, and,
under this stimulus, one Hayes lamp was made; that improvements in
the location of the spring were made; then it gave a 'jerky' light,
and, when the inventor was away, another clamp was put on by the
permission of the owners to remedy this irregular feeding; but that
afterwards no other lamp was ever constructed, and the Hayes clutch
was left among other 'odds and ends,' and that the indifference
with which it was received, its confessed faults, the attempted
Page 132 U. S. 47
improvements, and its disuse show that the Hayes clamp never was
anything more than an attempt to invent something which proved to
be a failure."
"The question of fact in this part of the case must turn upon
the character of the use of the lamp prior to September 16th,
because it is established that the Hayes clamp and the Brush clamp,
in its patented features, were substantially alike, and that the
point in which they differ,
viz., the length of the arms,
is not a part of the principle of the device. Was the lamp with
this clutch used merely to gratify curiosity, or for purposes of
experiment, to see whether the feeding device was successful, or
whether anything more was to be done to perfect it? or was it put
to use in the ordinary business of the mill, as a thing which was
completed, and was for use, and was neither upon trial nor for
show?"
"Hayes made the lamp for Wallace & Sons as an improvement
upon the White lamp, and apparently turned it over to them to be
used when they chose. An alteration was subsequently made in the
location of the spring. The lamp was used at different times, in
the work of the mill at night, indoors and out of doors. Its use at
these times does not seem to have been for the purpose of testing
the machine, or of calling attention to its qualities, or of
gratifying curiosity, but it was used to furnish light to the
workmen at their work. I have queried whether this use was not that
of a thing which might be of help in an emergency, and which was
thought to be better than nothing, though not of much advantage;
but it was apparently used to accomplish the ordinary purposes of
an electric light in a mill, to enable the workmen to see at night,
although it was not uniformly used, because the mill was lighted by
gas."
"But the plaintiffs press the question, why, then, was the
further use of the Hayes clamp and lamp discontinued? This question
is significant because the abandonment of a thing which is greatly
wanted is ordinarily a very suggestive circumstance to show that it
was defective, and that, before the invention could be completed,
something was to be done which never was done. "
Page 132 U. S. 48
"I think that Wallace & Sons did not push the electric lamp
business because they had no generator, and I also think that the
Hayes lamp, either with or without the Hayes clutch, did not
impress them favorably, for they contented themselves with making
only one specimen, whereas they made six White lamps, and, after
much experimenting, and after the invention of the Hayes lamp, they
made fifty or sixty plate lamps. For some reason, they did not
manufacture the Hayes lamp, but turned away to the plate lamps. But
the facts that the anticipatory device was the device of the
patent, and did do practical work, and was put to ordinary use, and
that it does not appear that the Hayes clamp was the cause of the
neglect with which Wallace & Sons treated the Hayes lamp, seem
to me to outweigh the doubts which arise from the shortness of its
existence, and its permanent disappearance from a carbon pencil
lamp."
"The case is that of the public, well known, practical use, in
ordinary work, with as much success as was reasonable to expect at
that stage in the development of the mechanism belonging to
electric arc lighting, of the exact invention which was
subsequently made by the patentee, and although only one clamp and
one lamp were ever made, which were used together two and one-half
months only, and the invention was then taken from the lamp, and
was not afterwards used with carbon pencils, it was an anticipation
of the patented device, under the established rules upon the
subject. With a strong disinclination to permit the remains of old
experiments to destroy the pecuniary value of a patent for a useful
and successful invention, and remembering that the defendants must
assume a weighty burden of proof, I am of the opinion that the
patentee's invention has been clearly proved to have been
anticipated by that of Hayes.
Coffin v. Ogden, 18 Wall.
120;
Reed v. Cutter, 1 Story 590;
Pickering v.
McCullough, 104 U. S. 310; Curtis on Patents
ยงยง 89-92."
"The bill, so far as it relates to the clamp patent, is
dismissed."
We have examined carefully the evidence in this case relied upon
by the plaintiffs to show that the clamp arrangement of
Page 132 U. S. 49
Hayes was not a perfected invention, but was merely an abandoned
experiment, and we have arrived at the conclusion that Judge
Shipman's views on the subject are correct. They are well and
accurately expressed, and we could not add to their force by a
prolonged discussion of what is purely a question of fact.
The cases of
Coffin v. Ogden and
Pickering v.
McCullough, cited by Judge Shipman, are enforced by the case
of
Hall v. Macneale, 107 U. S. 90. This
latter case meets also the objection made by the appellants that
the mechanism of the Hayes clutch was concealed from view, and the
further objection that it would not operate as perfectly as that of
the Brush invention. In
Hall v. Macneale, speaking of the
anticipating safes, this Court said:
"The invention was complete in those safes. It was capable of
producing the results sought to be accomplished, though not as
thoroughly as with the use of welded steel and iron plates. The
construction and arrangement and purpose and mode of operation and
use of the bolts in the safes were necessarily known to the workmen
who put them in. They were, it is true, hidden from view, after the
safes were completed, and it required a destruction of the safes to
bring them into view, but this was no concealment of them, or use
of them in secret. They had no more concealment than was
inseparable from any legitimate use of them."
It is contended by the appellants that notwithstanding the prior
existence of the Hayes apparatus as a perfected invention, claims 5
and 6 of the reissue are sustainable, because each of them is
limited to an "annular clamp." It is urged that the clamp of the
patent is a ring which surrounds a cylindrical rod, and that the
rod in the Hayes apparatus was square or rectangular, and was
surrounded by a rectangular clamp. But it is quite apparent that
claims 5 and 6 of the reissue would, if the patent were valid, be
infringed by the manufacture and use of the patented apparatus with
a rectangular carbon rod surrounded by a rectangular clamp. Such an
apparatus might be inferior in perfection and utility to the
cylindrical rod with the ring clamp, but it would still embody the
principle of the
Page 132 U. S. 50
invention, carried out by equivalent means. The improvement, if
any, in the use of the circular clamp over the rectangular clamp
was only a question of degree in the use of substantially the same
means.
We are of the opinion that the decree of the circuit court
must be affirmed, and it is so ordered.